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A Practitioner’s Guide to European Patent Law: For National Practice and the Unified Patent Court
9781509947645, 9781509947676, 9781509947669

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Table of contents :
Explanatory Note on the Second Edition and Acknowledgements
Contents
Abbreviations
Table of Cases
Table of EU and International Material
Table of National Materials
Introduction
I. Towards a ius commune of Patent Law
II. The Purpose of this Book
1. The Skilled Person and their Common General Knowledge
I. The Skilled Person or Team
II. Common General Knowledge
III. Key Issues for the UPC
2. Scope of Protection of Patent Claims
I. Statutory Basis
II. Principles of Construction
III. General Principles of National Law on the Doctrine of Equivalents
IV. The Role of a 'Formstein Defence'
V. The Role of the Prosecution File
VI. Particular Terms and Forms of Claim
VII. Numerical Ranges
VIII. Case Comparison – The Pemetrexed Decisions
IX. Key Issues for the UPC
3. Direct Infringement
I. Statutory Basis
II. Liability
III. Territoriality
IV. Product Claims (Article 25(a) CPC 1989)
V. Process Claims (Article 25(b) CPC 1989)
VI. Products Made by an Infringing Process (Article 25(c) CPC 1989)
VII. Processes for Obtaining New Products
VIII. Second Medical Use Claim Infringement
IX. Infringement of DNA Sequences
X. Unjustified Threats
XI. Key Issues for the UPC
4. Indirect Infringement
I. Statutory Basis
II. Means Relating to an Essential Element of the Invention
III. Means Suitable for Putting the Invention into Effect
IV. Knowledge
V. Staple Commercial Products
VI. Double-territoriality
VII. Indirect Infringement of Swiss Form Claims
VIII. Indirect Infringement of EPC 2000 Claims
IX. Other Forms of Contributory Infringement
X. Key Issues for the UPC
5. General Defences
I. The Diverse Sources of Defence to Infringement
II. The Experimental Use Exemption
III. The Bolar Exemption
IV. Other Statutory Defences
V. Exhaustion
VI. De minimis
VII. Public Interest Compulsion and Crown Use
VIII. Invalidity and Non-Infringement of Claims Asserted
IX. Issue Estoppel
X. FRAND Licence Objection
XI. Prior Use (Article 37 CPC 1989)
XII. Innocent Infringement as a Defence to Damages
XIII. Key Issues for the UPC
6. Declarations
I. General Jurisdictional Basis
II. Declarations of Non-Infringement
III. Declarations that a Patent is Standard Essential
IV. Declarations Concerning Validity
V. Key Issues for the UPC
7. FRAND
I. Standards, SEPs and FRAND
II. Guidance at the European Level
III. General Principles of National Law
IV. Determining the FRAND Rate
V. Anti-Suit Injunctions (ASIs) and Anti-Anti-Suit Injunctions (AASIs)
VI. Key Issues for the UPC
8. Remedies
I. Statutory Basis
II. Preliminary Injunctions
III. Damages for Unjustified Injunction
IV. Protective Letters
V. Quia Timet Injunction
VI. Final Injunction
VII. Springboard Relief
VIII. Award of Damages
IX. Account of Profits
X. Recall, Removing from the Channels of Commerce and Destruction
XI. Publication of Judgment
XII. Effect of Tested Validity
XIII. Substantive Treatment of Costs
XIV. Key Issues for the UPC
9. Patentability and Industrial Application
I. Statutory Basis
II. Industrial Application
III. Excluded Subject-matter
IV. Exceptions to Patentability
V. Methods of Treatment and Diagnostics – Article 53(c) EPC
VI. Key Issues for the UPC
10. Novelty
I. Statutory Basis
II. General Principles of EPO and National Case Law
III. Treatment of Disclosure and Enablement
IV. Interpreting Patent Claims and the Prior Art for Novelty Purposes
V. Made Available to the Public
VI. Novelty Over General Disclosures in the Art
VII. Priority
VIII. Product by Process Claims
IX. Second and Subsequent Medical Uses
X. Other Forms of Purpose-limited Claims
XI. Claim Amendment
XII. Key Issues for the UPC
11. Inventive Step
I. Statutory Basis
II. Date
III. Determination of Fact or Law?
IV. Technical or Commercial Question?
V. The Role of Common General Knowledge
VI. Structured Approaches to Inventive Step
VII. Motivation Based Approaches
VIII. Criticism of Problem-and-Solution
IX. Criticism of Motivation-based Tests
X. An Alternative Basis for Assessing Inventive Step
XI. Mixed Technical and Non-technical Features
XII. Combinations of Prior Art Features
XIII. Other Factors
XIV. Case Comparison (Tadalafil)
XV. Key Issues for the UPC
12. Sufficiency
I. Statutory Basis
II. General Approaches of EPO and National Law
III. Principle of General Application
V. Forms of Claim
VI. Inventive Improvements / Infringements
VII. Promised Quality not Enabled and Errors
VIII. Deposits of Biological Material
IX. Plausibility in the Context of Insufficiency
X. Lack of Clarity
XI. Key Issues for the UPC
13. Plausibility
I. Is There a Statutory Basis?
II. Origins of Plausibility in the EPO
III. Inventive Step
IV. Insufficiency
V. Industrial Applicability
VI. The Novelty Context
VII. Post-dated Evidence and ab-initio Plausibility
VIII. The Plausibility Threshold
IX. Further Questions
X. Key Issues for the UPC
14. Supplementary Protection Certificates
I. Statutory Basis
II. Certificates for Plant Protection Products
III. Conditions for Grant
IV. Protected by a Basic Patent in Force
V. Marketing Authorisations in the SPC Context
VI. Extent of Protection (Article 4 SPC Regulation)
VII. Same Rights as Conferred by the Patent (Article 5 SPC Regulation)
VIII. Term
IX. Medicinal Products for Paediatric Use
X. The SPC Manufacturing Waiver
XI. Key Issues for the UPC and the Need for Reform
15. Patent Ownership, Dealings and Employee Inventors
I. Introduction
II. Ownership
III. Approaches to Inventor Compensation
IV. Rights of Co-owners
V. Patent Dealings
VI. Effect of Transfer of Ownership on Licensee
VII. Compulsory Licences
VIII. Public Interest Compulsion
IX. Unitary Patents as 'Objects of Property'
16. Cross-border Actions in Europe
I. Relation between National and EPO Proceedings
II. The Brussels Regulation
IV. Cross-border Infringement Actions
VI. Key Issues for the UPC
V. Cross-border Declarations of Non-infringement
17. Evidence
I. General Principles
II. Burden of Proof
III. General Obligations to Produce Evidence
IV. Specific Means for Obtaining Evidence
V. Role of Witness of Fact Evidence
VI. Opinion Evidence
VII. Experiments
VIII. Letters Rogatory (Letters of Request) and US 1782
IX. Border Seizures
X. Confidentiality
XI. Privilege
XII. Key Issues for the UPC
Index

Citation preview

A PRACTITIONER’S GUIDE TO EUROPEAN PATENT LAW This new edition is a comprehensive and practical guide to European patent law – a ‘ius commune’. The book highlights the areas of consistency and difference between the most influential European patent law jurisdictions: the European Patent Office, England and Wales, France, Germany, and the Netherlands. The book also draws insights from further afield, with contributions from other, very active, patent jurisdictions, including Italy, Sweden, Denmark, and Switzerland. Uniquely, the book addresses European patent law by subject matter area, assessing the key national and EPO approaches together rather than nation by nation. Each chapter outlines the common ground between the national approaches and provides a guide for the possible application of European patent law in national courts and the UPC in the future. In addition to featuring content on new countries, the second edition includes new c hapters dedicated to the substantive aspects of FRAND, declarations, and evidence. There is also an expanded commentary on construction, including common terms used in patent claims. Am ust-read for anyone working in the field of European patent law.

ii

A Practitioner’s Guide to European Patent Law For National Practice and the Unified Patent Court Second Edition

Dr Paul England With contributions by:

Sara Burghart Julia Ericsson Fabrizio Jacobacci Judith Krens Peter Ling Klaus Ewald Madsen François Pochart Mattias Rättzén Michael Washbrook Dr Nora E. Wessendorf

HART PUBLISHING Bloomsbury Publishing Plc Kemp House, Chawley Park, Cumnor Hill, Oxford, OX2 9PH, UK 1385 Broadway, New York, NY 10018, USA 29 Earlsfort Terrace, Dublin 2, Ireland HART PUBLISHING, the Hart/Stag logo, BLOOMSBURY and the Diana logo are trademarks of Bloomsbury Publishing Plc First published in Great Britain 2022 Copyright © The author and contributors severally 2022 The author and contributors have asserted their right under the Copyright, Designs and Patents Act 1988 to be identified as Authors of this work. All rights reserved. No part of this publication may be reproduced or transmitted in any form or by any means, electronic or mechanical, including photocopying, recording, or any information storage or retrieval system, without prior permission in writing from the publishers. While every care has been taken to ensure the accuracy of this work, no responsibility for loss or damage occasioned to any person acting or refraining from action as a result of any statement in it can be accepted by the authors, editors or publishers. All UK Government legislation and other public sector information used in the work is Crown Copyright ©. All House of Lords and House of Commons information used in the work is Parliamentary Copyright ©. This information is reused under the terms of the Open Government Licence v3.0 (http://www. nationalarchives.gov.uk/doc/open-government-licence/version/3) except where otherwise stated. All Eur-lex material used in the work is © European Union, http://eur-lex.europa.eu/, 1998–2022. A catalogue record for this book is available from the British Library. Library of Congress Cataloging-in-Publication data Names: England, Paul, 1971- author. Title: A practitioner’s guide to European patent law : for national practice and the Unified Patent Court / Dr Paul England ; with contributions by: Sara Burghart, Julia Ericsson, Fabrizio Jacobacci, Judith Krens, Peter Ling, Klaus Ewald Madsen, François Pochart, Mattias Rättzén, Michael Washbrook, Dr Nora E. Wessendorf. Description: Second edition. | Oxford ; New York : Hart, 2022. | Includes bibliographical references and index. Identifiers: LCCN 2022022081 (print) | LCCN 2022022082 (ebook) | ISBN 9781509947645 (hardback) | ISBN 9781509947669 (pdf) | ISBN 9781509947652 (Epub) Subjects: LCSH: Unified Patent Court. | European Patent Convention (2000 November 29) | Patent laws and legislation—Europe. | Patent laws and legislation—Great Britain. | International and municipal law—Great Britain. Classification: LCC KJC2725 .E54 2022 (print) | LCC KJC2725 (ebook) | DDC 346.404/86—dc23/eng/20220622 LC record available at https://lccn.loc.gov/2022022081 LC ebook record available at https://lccn.loc.gov/2022022082 ISBN: HB: 978-1-50994-764-5 ePDF: 978-1-50994-766-9 ePub: 978-1-50994-765-2 Typeset by Compuscript Ltd, Shannon To find out more about our authors and books visit www.hartpublishing.co.uk. Here you will find extracts, author information, details of forthcoming events and the option to sign up for our newsletters.

EXPLANATORY NOTE ON THE SECOND EDITION AND ACKNOWLEDGEMENTS Explanatory Note This book has its origins in a series of articles: three articles written for the European Intellectual Property Review in 2010, five articles for the Journal of Intellectual Property and Practice between 2014 and 2018, and two further articles in BioScience Law Review. These articles sketched out common principles shared by infringement and validity law, and areas of common ground in substantive patent law between England and Wales, France, Germany and the Netherlands. At the time that exercise was started, the UPC and Unitary Patent project appeared relatively close to completion and provided a particular motivation for examining the features of national approaches that could pave the way ahead for the new court. Since that time, the UPC project has stalled more than once – first by the decision of the UK Government that it will not participate, and then by the complaints before the Federal Constitutional Court of Germany. Nonetheless, at the time of writing, the court is once again moving forward to opening, and indeed its provisional application period has already begun. It has also become clear in day-to-day practice at Taylor Wessing, and from the response to the first edition of this book, that there is enthusiasm for an approach to substantive European patent law that compares the principal jurisdictions in a subject-by-subject manner. This comes from in-house lawyers who have to deal with patent litigation in Europe, lawyers practising in the national courts and patent attorneys prosecuting patents in the EPO. As the Introduction explains, the national European courts do not exist in a vacuum and nor will the UPC; a common foundation in the European and Community Patent Conventions means there is an interest in learning from and aligning with, where possible, the approaches to substantive law in other jurisdictions. Despite the fact that the UK will not participate in the UPC, its patent lawyers and patent attorneys will do so and the decisions of its courts will remain influential. All those involved with European patents therefore need to take something of a borderless approach to the subject of substantive law. This book is intended to serve this approach. To emphasise, this book is concerned with substantive law and not the national procedures of the European courts dealing with patent matters. There are, however, some areas in which the line between substantive law and procedure is difficult to draw and a judgement has been made on what to include and what to exclude. Remedies is one example. As a result of feedback on the first edition, the general approach to evidence has also been included. Furthermore, although the core of the book is in the jurisdictions of England and Wales, France, Germany and the Netherlands, this edition has sought to include within its scope the approaches to substantive patent law in Denmark, Italy, Sweden and Switzerland. The developing subjects of declaratory relief and SEPs/FRAND have also been given their own chapters.

vi Explanatory Note on the Second Edition and Acknowledgements Where reference is made to England and Wales in this book, it is to reflect the fact that most patent cases in the UK are decided by the Patents Court and the Court of Appeal. These jurisdictions do not extend to Scotland and Northern Ireland, although most substantive English patent case law is followed across the UK. By contrast, the Patents Act 1977 itself and decisions of the Supreme Court do apply across the whole of the UK. Reference to the UK is, therefore, largely restricted to discussion of the Act and Supreme Court decisions, or where the broader context demands it.

Acknowledgements Special thanks is due to the lead contributors to this book – Julia Ericsson, Fabrizio Jacobacci, Judith Krens, Peter Ling, Klaus Ewald Madsen, François Pochart, Mattias Rätzén, Michael Washbrook, Dr Nora E. Wessendorf and Sara Burghart of Sandoz (who laid the foundations for the German contribution to this book in the first edition) – for their expertise and patience, and also to the partners of the Taylor Wessing Patents Group for their support of this project, in particular Nigel Stoate and Simon Cohen who lead the UK and European practices. Special thanks is also owed to the teams of people who have supported the lead contributors (in no particular order): Tobias Baus, Verena Bertram, Jan Phillip Rektorschek, Aurel-Damian Rosche, Julius Zacharias, Signe Lundorf, Armin Sarvan, Søren Chr. Søborg Andersen, Marthe Riewald, David Mulder, Asma Bendjaballah, Océane Millon de La Verteville and Andrew Payne. A book of this nature is simply not possible without the contributions of such experts and I am very grateful to them. Last but not least, thanks to Jackie and Thomas for putting up with weekend after weekend, and evening after evening, of watching me working on this book and never walking the dog. Paul England Taylor Wessing, February 2022

CONTENTS Explanatory Note on the Second Edition and Acknowledgements�� v Abbreviations�� xxi Table of Cases�� xxv Table of EU and International Material��lxxxi Table of National Materials�� xciii Introduction�� 1 I. Towards a ius commune of Patent Law�� 1 A. International Trade; National Law�� 1 B. Harmonisation in Europe�� 2 C. The Proposed Solution – The UPC�� 5 II. The Purpose of this Book�� 5 1. The Skilled Person and their Common General Knowledge�� 7 I. The Skilled Person or Team�� 7 A. Role in Brief�� 7 B. Definitions�� 8 C. Area of Expertise�� 8 D. Level of Expertise�� 9 E. Hindsight Risk�� 10 F. Different Skilled Person for Sufficiency and Inventive Step�� 10 G. Approach to the Prior Art�� 13 II. Common General Knowledge�� 13 A. Basic Principles�� 13 B. Literature Searches and Databases�� 15 C. Local Common General Knowledge and Limited Technical Mindset�� 17 III. Key Issues for the UPC�� 18 A. The Skilled Person�� 18 B. Common General Knowledge�� 19 2. Scope of Protection of Patent Claims�� 20 I. Statutory Basis�� 20 II. Principles of Construction�� 21 III. General Principles of National Law on the Doctrine of Equivalents�� 21 A. Denmark�� 21 B. England and Wales�� 22 C. France�� 27 D. Germany�� 28

viii Contents

IV. V. VI.

VII.

VIII.

IX.

E. Italy�� 30 F. The Netherlands�� 32 G. Sweden�� 34 H. Switzerland�� 36 The Role of a ‘Formstein Defence’�� 38 The Role of the Prosecution File�� 38 Particular Terms and Forms of Claim�� 42 A. Words of Approximation and Degree�� 42 B. ‘For’, ‘Suitable for’ and Purpose Limited Claims�� 43 C. ‘Obtainable by’ and Product by Process Claims�� 44 D. ‘Preferably’, ‘Preset’ and ‘Predetermined’�� 45 E. ‘Consisting of ’ and ‘Comprising of ’�� 46 F. ‘Characterised by’�� 46 G. Words Denoting Consequence�� 47 Numerical Ranges�� 48 A. Denmark�� 48 B. England and Wales�� 48 C. France�� 50 D. Germany�� 50 E. Italy�� 51 F. Other European Countries�� 51 Case Comparison – The Pemetrexed Decisions�� 52 A. Denmark�� 52 B. The Case in England and Wales�� 52 C. The Case in France�� 53 D. The Case in Germany�� 55 E. The Case in Italy�� 56 F. The Case in the Netherlands�� 57 G. Sweden�� 59 H. Switzerland�� 60 Key Issues for the UPC�� 61 A. Scope of Protection�� 61 B. The Prosecution File�� 63 C. Numerical Ranges�� 63

3. Direct Infringement�� 64 I. Statutory Basis�� 64 II. Liability�� 64 III. Territoriality�� 65 IV. Product Claims (Article 25(a) CPC 1989)�� 67 A. Statutory Basis�� 67 B. Offers and Pre-expiry Offers�� 67 C. Repair or Manufacture?�� 70 D. Kit of Parts�� 72 V. Process Claims (Article 25(b) CPC 1989)�� 73 A. Using a Process�� 73 B. Offering a Process for Use�� 73 VI. Products Made by an Infringing Process (Article 25(c) CPC 1989)�� 74

Contents ix VII. Processes for Obtaining New Products�� 76 VIII. Second Medical Use Claim Infringement�� 78 A. Swiss-form and EPC 2000 Claims�� 78 B. ‘Skinny Labelling’�� 78 C. Denmark�� 79 D. England and Wales�� 80 E. France�� 84 F. Germany�� 85 G. Italy�� 86 H. The Netherlands�� 87 I. Sweden�� 88 J. Switzerland�� 90 IX. Infringement of DNA Sequences�� 92 X. Unjustified Threats�� 92 A. England and Wales�� 92 B. France�� 95 C. Germany�� 95 D. Italy�� 97 E. Sweden�� 97 F. Switzerland�� 98 XI. Key Issues for the UPC�� 99 A. Pre-expiry Offers�� 99 B. Repair�� 100 C. Products of Processes�� 100 D. Second Medical Use�� 101 E. Unjustified Threats�� 102 4. Indirect Infringement�� 103 I. Statutory Basis�� 103 II. Means Relating to an Essential Element of the Invention�� 103 III. Means Suitable for Putting the Invention into Effect�� 106 IV. Knowledge�� 107 A. Actual and Constructive Knowledge�� 107 B. Timing of the Intention and Infringement by the Supplied Party�� 108 V. Staple Commercial Products�� 110 VI. Double-territoriality�� 110 VII. Indirect Infringement of Swiss Form Claims�� 112 A. England and Wales�� 113 B. France�� 113 C. Germany�� 114 D. The Netherlands�� 115 E. Other Countries�� 116 VIII. Indirect Infringement of EPC 2000 Claims�� 117 IX. Other Forms of Contributory Infringement�� 118 A. Joint Tortfeasance�� 118 X. Key Issues for the UPC�� 120 A. Acts of Indirect Infringement Applicable to European Patents�� 120 B. Essential Element of the Invention�� 120

x Contents 5. General Defences�� 123 I. The Diverse Sources of Defence to Infringement�� 123 II. The Experimental Use Exemption�� 123 A. General Principles of National Law�� 123 III. The Bolar Exemption�� 129 A. General Principles of National Law�� 129 B. Third Party Supply�� 134 C. Research Tools�� 134 IV. Other Statutory Defences�� 135 A. Private Use�� 135 B. Ships, Aircraft etc�� 136 C. Agricultural Exemptions�� 136 V. Exhaustion�� 137 A. Placing on the Market Outside the EEA: Exhaustion or Implied Licence?�� 137 B. Exhaustion of Method Claims�� 138 C. Spare Parts or Impermissible Making?�� 139 D. The ‘Specific Mechanism’�� 139 VI. De minimis�� 140 VII. Public Interest Compulsion and Crown Use�� 140 VIII. Invalidity and Non-Infringement of Claims Asserted�� 141 IX. Issue Estoppel�� 141 X. FRAND Licence Objection�� 141 XI. Prior Use (Article 37 CPC 1989)�� 142 A. England and Wales�� 142 B. France�� 143 C. Germany�� 144 D. The Netherlands�� 144 E. Other European Countries�� 145 XII. Innocent Infringement as a Defence to Damages�� 146 XIII. Key Issues for the UPC�� 147 A. Limitations on Infringement in the UPC Agreement�� 147 B. Guidance from the National Courts�� 149 C. Principles of Exhaustion�� 149 D. Experimental Use and Bolar Exemptions�� 150 6. Declarations�� 152 I. General Jurisdictional Basis�� 152 A. England and Wales�� 152 B. The Netherlands�� 153 C. Other European Countries�� 153 II. Declarations of Non-Infringement�� 153 III. Declarations that a Patent is Standard Essential�� 155 IV. Declarations Concerning Validity�� 157 A. Prohibition on Declaration without Revocation�� 157 B. The Gillette Defence�� 157 C. Arrow Declarations in England and Wales�� 158 D. Gillette Declarations in the Netherlands�� 163 E. Other European Countries�� 164 V. Key Issues for the UPC�� 165

Contents xi 7. FRAND�� 167 I. Standards, SEPs and FRAND�� 167 A. Concepts�� 167 B. FRAND as a Defence�� 167 II. Guidance at the European Level�� 169 A. European Commission�� 169 B. The CJEU Ruling in Huaweï v ZTE�� 170 III. General Principles of National Law�� 171 A. England and Wales�� 171 B. France�� 175 C. Germany�� 177 D. The Netherlands�� 178 E. Italy�� 179 IV. Determining the FRAND Rate�� 179 A. FRAND Rate Methodologies and Benchmarks�� 179 B. Comparing Portfolios�� 180 C. Portfolio Valuation�� 182 D. Obtaining Licences for Comparison�� 184 V. Anti-Suit Injunctions (ASIs) and Anti-Anti-Suit Injunctions (AASIs)�� 186 VI. Key Issues for the UPC�� 189 8. Remedies�� 191 I. Statutory Basis�� 191 II. Preliminary Injunctions�� 192 A. General Principles�� 192 B. Generic Launch Cases�� 198 III. Damages for Unjustified Injunction�� 203 A. The CJEU Decision in Bayer/Richter�� 203 B. National approaches in light of Bayer/Richter�� 205 IV. Protective Letters�� 208 V. Quia Timet Injunction�� 209 VI. Final Injunction�� 210 A. Mandatory or Discretionary?�� 210 B. Stay of Injunction and Tailored Orders�� 212 C. Public Interest Defence�� 214 VII. Springboard Relief�� 215 VIII. Award of Damages�� 217 A. Grounds of Recovery�� 217 B. Calculation of Damages�� 218 C. Innocent Infringement�� 220 D. Accumulation of Damages from Publication�� 220 E. Punitive Damages and Moral Prejudice�� 221 F. Reasonable Royalty�� 222 G. Date from Which Recovery May be Made�� 223 IX. Account of Profits�� 224 A. General Principles�� 224 B. Calculation of Account of Profits�� 225 X. Recall, Removing from the Channels of Commerce and Destruction�� 227 XI. Publication of Judgment�� 229

xii Contents XII. Effect of Tested Validity�� 230 XIII. Substantive Treatment of Costs�� 231 XIV. Key Issues for the UPC�� 232 A. Preliminary Injunctions�� 232 B. Final Injunctions�� 234 C. Damages�� 235 D. Seizure, Delivery-up and Publication�� 236 E. Costs�� 237 9. Patentability and Industrial Application�� 238 I. Statutory Basis�� 238 II. Industrial Application�� 238 A. The Boards of the EPO�� 238 B. England and Wales�� 240 C. France�� 240 D. Germany�� 240 E. The Netherlands�� 241 F. Other European Countries�� 241 G. The Role of Plausibility in Industrial Application�� 242 III. Excluded Subject-matter�� 242 A. Business Methods�� 243 B. Discoveries and Scientific Theories�� 243 C. Mathematical Methods and Mental Acts�� 244 D. Presentations of Information�� 245 E. Computer Programs and Computer Implemented Inventions�� 247 IV. Exceptions to Patentability�� 252 A. Overview of the Biotechnology Directive�� 252 B. Isolated Biological Material (Including DNA Sequences) – Articles 3(ii) and 5 Biotechnology Directive�� 254 C. ‘Ordre Public’ and Morality – Article 6(1) Biotechnology Directive, and Article 53(a) and Rule 28(1)(d) EPC�� 254 D. Human Cloning and the Use of Human Embryos (Including Stem Cells) – Article 6(2)(c) Biotechnology Directive, Article 53(a) and Rule 28(1)(c) EPC�� 255 E. Plant and Animal Varieties – Article 53(b)EPC (Rule 28(2)) and Article 4(1) Biotechnology Directive�� 257 F. Microbiological Processes�� 259 V. Methods of Treatment and Diagnostics – Article 53(c) EPC�� 259 A. Treatment by Surgery�� 259 B. Therapeutic Methods�� 260 C. Products Used in Therapy�� 261 D. Diagnostic Patents�� 263 VI. Key Issues for the UPC�� 264 A. Industrial Applicability�� 264 B. Excluded Subject-matter�� 264 C. Exceptions to Patentability�� 265

Contents xiii 10. Novelty�� 266 I. Statutory Basis�� 266 II. General Principles of EPO and National Case Law�� 266 A. The Boards of the EPO�� 266 B. Denmark�� 267 C. England and Wales�� 267 D. France�� 268 E. Germany�� 268 F. Italy�� 269 G. The Netherlands�� 269 H. Sweden�� 269 I. Switzerland�� 269 III. Treatment of Disclosure and Enablement�� 270 A. Disclosure and Enablement as Distinct Concepts�� 270 B. Disclosure�� 270 C. Enablement�� 271 IV. Interpreting Patent Claims and the Prior Art for Novelty Purposes�� 272 A. The Role of Article 69 and the Protocol�� 272 B. The Teaching of the Prior Art�� 274 V. Made Available to the Public�� 278 A. General Principles�� 278 B. Prior Use�� 280 C. The Public�� 282 D. Bar of Confidentiality�� 282 E. Prior Art Published on the Internet�� 285 VI. Novelty Over General Disclosures in the Art�� 286 A. Selection Inventions in General�� 286 B. Increased Purity and Isolation�� 287 C. Markush Formulae�� 287 D. Numerical Ranges�� 289 VII. Priority�� 291 A. Claiming Priority�� 291 B. Assignment of Priority�� 296 C. Application of Plausibility to Priority�� 297 VIII. Product by Process Claims�� 297 IX. Second and Subsequent Medical Uses�� 298 X. Other Forms of Purpose-limited Claims�� 299 A. Dosage Regimes�� 299 B. Personalised Medicines (Sub-population Claims)�� 301 XI. Claim Amendment�� 304 A. Allowable Amendments�� 304 B. Subject-matter Extending Beyond the Content of the Application as Filed (Added Matter) (Article 123(2))�� 305 C. Extending the Protection Conferred by a Granted Patent (Article 123(3))�� 307 XII. Key Issues for the UPC�� 309 A. The Application of the EPC in the UPC�� 309

xiv Contents B. Areas of Consistency in EPO and National Case Law on Novelty�� 309 C. Application of the Protocol for the Purpose of Novelty?�� 309 D. Selections and Overlapping Numerical Ranges�� 310 E. Priority�� 310 F. Personalised/Sub-population Claims�� 311 11. Inventive Step�� 312 I. Statutory Basis�� 312 II. Date�� 312 III. Determination of Fact or Law?�� 312 IV. Technical or Commercial Question?�� 313 V. The Role of Common General Knowledge�� 314 VI. Structured Approaches to Inventive Step�� 314 A. EPO Problem-and-Solution Approach�� 314 B. Denmark�� 318 C. England and Wales�� 318 D. France�� 320 E. Germany�� 320 F. Italy�� 321 G. The Netherlands�� 322 H. Sweden�� 322 I. Switzerland�� 323 VII. Motivation Based Approaches�� 323 A. EPO�� 323 B. Denmark�� 325 C. England and Wales�� 325 D. France�� 329 E. Germany�� 329 F. Italy�� 329 G. The Netherlands�� 330 H. Sweden�� 330 I. Switzerland�� 330 VIII. Criticism of Problem-and-Solution�� 330 A. Hindsight�� 331 B. Perceiving that there is a Problem�� 331 C. The 5¼ Inch Plate Paradox�� 331 IX. Criticism of Motivation-based Tests�� 332 X. An Alternative Basis for Assessing Inventive Step�� 333 A. The ‘Workshop Variations’ Approach�� 333 B. Workshop Variations in the EPO and Other Countries�� 334 XI. Mixed Technical and Non-technical Features�� 335 A. The Approach of the EPO Boards�� 335 B. Computer-implemented Simulation of a Technical System�� 337 C. Mixed Features Outside the EPO�� 338 XII. Combinations of Prior Art Features�� 339 XIII. Other Factors�� 339 A. Secondary Indicia�� 339 B. Technical Prejudice�� 342

Contents xv C. Weight Attributed to the Prior Art�� 343 D. Bonus Effects�� 345 E. Collocations�� 346 F. A Series of Steps�� 346 G. Many Alternative Routes�� 347 XIV. Case Comparison (Tadalafil)�� 347 A. The Case in England and Wales�� 347 B. The Case in Germany�� 348 C. The Case in the Netherlands�� 349 D. The Case in Sweden�� 349 E. The Case in Switzerland�� 350 XV. Key Issues for the UPC�� 351 A. The Application of the EPC in the UPC�� 351 B. Different Structures, Similar Principles�� 351 C. Scope for Flexibility�� 352 D. No One-size-fits-all�� 353 12. Sufficiency�� 354 I. Statutory Basis�� 354 II. General Approaches of EPO and National Law�� 354 A. The Boards of the EPO�� 354 B. Denmark�� 356 C. England and Wales�� 357 D. France�� 358 E. Germany�� 359 F. Italy�� 359 G. The Netherlands�� 360 H. Sweden�� 360 I. Switzerland�� 361 III. Principle of General Application�� 361 IV. Technical Contribution and Invention Treated Separately�� 363 V. Forms of Claim�� 364 A. Pure Product Claims�� 364 B. Hybrid Product and Process Claims�� 364 C. Markush Claims�� 365 D. Functional and ‘Reach-Through’ Claims�� 365 VI. Inventive Improvements/Infringements�� 368 VII. Promised Quality not Enabled and Errors�� 368 VIII. Deposits of Biological Material�� 369 IX. Plausibility in the Context of Insufficiency�� 369 A. The Warner-Lambert Decision�� 370 B. The UK v EPO Approaches to the Threshold�� 373 C. Second Medical Use Claims vs Per Se Claims�� 373 D. Plausibility Applied to Functional Claims�� 374 E. Plausibility Applied to Insufficiency in Other European Countries�� 376 X. Lack of Clarity�� 377 A. Statutory Basis�� 377 B. Lack of Clarity Attack Hidden Behind Insufficiency�� 377

xvi Contents C. Lack of Clarity Contributing to Insufficiency�� 378 D. Lack of Clarity vs Uncertainty (Ambiguity)�� 378 XI. Key Issues for the UPC�� 380 A. The Application of the EPC in the UPC�� 380 B. Common Principles�� 380 C. Invention and Technical Contribution�� 380 D. Functional and Reach through Claims�� 381 E. Plausibility of Technical Contribution�� 382 13. Plausibility�� 383 I. Is There a Statutory Basis?�� 383 II. Origins of Plausibility in the EPO�� 384 III. Inventive Step�� 385 A. First Application in the UK – Mere Speculation versus Plausibility�� 385 B. Plausibility in Light of the Teaching of the Specification and the Common General Knowledge�� 386 C. Obvious and Insufficient for Lack of Plausibility Alone�� 386 D. Vaguely Indicating an ‘Activity’ for Millions of Compounds Not Enough�� 386 E. Selection Inventions�� 387 F. Application to Inventive Step in Other European Countries�� 388 IV. Insufficiency�� 390 A. Plausible Experimental Results or Technical Concept�� 390 B. Further Second Medical Use Cases�� 391 C. Application to Functional Claims�� 393 D. Application to Insufficiency in Other European Countries�� 393 V. Industrial Applicability�� 395 VI. The Novelty Context�� 395 A. Priority Document�� 395 B. Prior Art�� 396 VII. Post-dated Evidence and ab-initio Plausibility�� 396 VIII. The Plausibility Threshold�� 399 A. The Warner-Lambert Pregabalin Case�� 399 B. Is There a Difference in Approach to the Threshold between the EPO and Other Countries?�� 401 IX. Further Questions�� 404 A. Are Per Se and Second Medical Use Claims Treated the Same Way?�� 404 B. Is the Plausibility Test the Same When Examined under Article 56 and Article 83?�� 405 X. Key Issues for the UPC�� 405 A. Technical Contribution�� 405 B. Plausibility as a Threshold Step�� 407 C. Plausibility as a Positive Requirement�� 407 D. Plausibility Applied to Different Claim Forms�� 408 E. Post-published Evidence�� 408 14. Supplementary Protection Certificates�� 409 I. Statutory Basis�� 409 II. Certificates for Plant Protection Products�� 410

Contents xvii III. Conditions for Grant�� 410 A. What is an ‘Active Ingredient’?�� 411 B. Active Ingredient – Example Cases�� 412 IV. Protected by a Basic Patent in Force�� 415 A. The Medeva Ruling�� 415 B. Functional Claims�� 417 C. Claims to a Combination�� 420 D. Markush Formulae�� 423 E. Protection in the Context of Multiple SPCs�� 424 V. Marketing Authorisations in the SPC Context�� 428 A. Non-EU Compliant First Marketing Authorisation�� 428 B. Equivalent Authorisations�� 428 C. SPC Based on Third Party Marketing Authorisation�� 430 VI. Extent of Protection (Article 4 SPC Regulation)�� 430 VII. Same Rights as Conferred by the Patent (Article 5 SPC Regulation)�� 431 VIII. Term�� 431 A. Negative or Zero Term�� 431 B. EU Accession Countries�� 431 C. ‘End of Procedure Notice’�� 432 D. ‘Date of Notification’�� 433 IX. Medicinal Products for Paediatric Use�� 433 A. Purpose and Scope�� 433 B. Application of the Specific Mechanism�� 434 X. The SPC Manufacturing Waiver�� 435 A. Manufacturing for ex-EU�� 435 B. Stockpiling for the EU�� 436 C. Safeguards�� 436 D. Transitional Arrangements�� 437 E. Questions About the Waiver�� 437 XI. Key Issues for the UPC and the Need for Reform�� 437 A. SPCs in the UPC Context�� 437 B. Reform�� 438 15. Patent Ownership, Dealings and Employee Inventors�� 440 I. Introduction�� 440 II. Ownership�� 440 A. Who is the Inventor?�� 440 B. Entitlement�� 441 III. Approaches to Inventor Compensation�� 447 A. England and Wales�� 447 B. France�� 449 C. Other Countries�� 450 IV. Rights of Co-owners�� 451 V. Patent Dealings�� 453 A. Patent Assignment�� 453 B. Rights Conferred by a Patent Licence�� 455 C. Implied Licence�� 456 D. Mortgage and Charge�� 457

xviii Contents

VI.

VII.

VIII.

IX.

E. Registration Requirements�� 458 F. Effect of Revocation, Surrender or Non-infringement of Patent Licensed�� 459 G. Block Exemption�� 459 Effect of Transfer of Ownership on Licensee�� 463 A. A Licensee’s Rights if a Third Party becomes a Co-owner of the Licensed Patent�� 464 B. A Licensee’s Rights if a Third Party becomes a Sole Owner of the Licensed Patent�� 465 Compulsory Licences�� 467 A. Denmark�� 467 B. England and Wales�� 467 C. France�� 468 D. Germany�� 469 E. Italy�� 470 F. The Netherlands�� 471 G. Sweden�� 472 H. Switzerland�� 473 Public Interest Compulsion�� 473 A. Denmark�� 473 B. England and Wales�� 474 C. France�� 475 D. Germany�� 477 E. Italy�� 477 F. The Netherlands�� 477 G. Sweden�� 478 H. Switzerland�� 478 Unitary Patents as ‘Objects of Property’�� 479 A. The Law Applicable to Unitary Patents as Objects of Property�� 479 B. What are ‘Objects of Property’?�� 480 C. Rights to Employee’s Invention and Compensation�� 481 D. Patent Licences and Other Agreements�� 481 E. Right Based on Prior Use of the Invention�� 483

16. Cross-border Actions in Europe�� 485 I. Relation between National and EPO Proceedings�� 485 A. Impact of Central Revocation or Amendment Pre-Merits Decision�� 485 B. Impact of Central Amendment Post-Merits Decision�� 486 C. Discretion to Stay National Proceedings�� 487 II. The Brussels Regulation�� 491 III. Cross-Border Validity Actions�� 492 A. GAT v LuK�� 492 IV. Cross-border Infringement Actions�� 493 A. CJEU Authority�� 493 B. The Dutch Approach to Cross-border Infringement Actions�� 496 C. The German Approach to Cross-border Infringement Actions�� 498 D. The English Approach to Cross-border Infringement Actions�� 498 E. Approaches to Cross-Border Infringement Actions in Other European Countries�� 500

Contents xix V. Cross-border Declarations of Non-infringement�� 501 A. ‘Torpedo’ Actions�� 501 B. Cross-border Declarations of Non-infringement under English Law�� 503 C. Other Cross-Border Declarations�� 504 D. Deciding the Terms of a Global FRAND Licence�� 505 VI. Key Issues for the UPC�� 506 A. The Current Status of Cross-border Actions�� 506 B. The UPC as a Court of the Member States�� 508 C. Cross-border Actions between the UK and UPC�� 509 D. The UPC ‘long-arm’ jurisdiction�� 510 17. Evidence�� 512 I. General Principles�� 512 II. Burden of Proof�� 512 III. General Obligations to Produce Evidence�� 515 A. Disclosure�� 515 B. Production�� 519 IV. Specific Means for Obtaining Evidence�� 519 A. Preservation Orders�� 519 B. Inspection Orders�� 519 C. Inter Partes vs Ex Parte�� 522 V. Role of Witness of Fact Evidence�� 522 VI. Opinion Evidence�� 523 A. Court Appointed Experts�� 523 B. Party Appointed Experts�� 525 VII. Experiments�� 531 A. Experiments Sanctioned by the Court�� 531 B. Experiments Not Sanctioned by the Court or Abandoned�� 532 VIII. Letters Rogatory (Letters of Request) and US 1782�� 534 IX. Border Seizures�� 535 A. The Customs Regulation in Patent Cases�� 535 B. Matters Outside the Customs Regulation�� 536 X. Confidentiality�� 537 A. Status of Hearings, Orders and Documentation�� 537 B. Confidentiality Clubs�� 538 C. Excluding Documents from Public Access�� 540 XI. Privilege�� 542 A. Attorney Client Privilege�� 542 B. Litigation Privilege�� 543 C. Treatment of Expert, Fact, Documentary and Experimental Evidence�� 544 D. Without Prejudice Communications�� 544 XII. Key Issues for the UPC�� 545 Index�� 549

xx

ABBREVIATIONS API

Active pharmaceutical ingredient

BGH

Bundesgerichtshof (German Federal Court of Justice)

Biotechnology Directive

Directive 98/44/EC of 6 July 1998 on the legal protection of biotechnological inventions

Board

A board of appeal of the EPO

Bolar Exemption

The exemption to patent infringement under Article 10(6) Medicines Directive (also referred to as the ‘Regulatory Review Defence’)

BpatG

Bundespatentgericht (German Federal Patent Court)

Brussels Regulation

Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast)

CEPS

The French Economic Committee of Health Care Products (Comité économique des produits de santé)

CIIs

Computer implemented inventions

CJEU

Court of Justice of the European Union

Contracting Member State

A Member State that signed the UPC Agreement on 19 February 2013

CPC 1973

Community Patent Convention 1973

CPC 1989

Community Patent Convention 1989

EBA

Enlarged Board of Appeal of the EPO

EBP

Essentially biological process

EEA

European Economic Area

EMA

European Medicines Agency

Enforcement Directive

Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the Enforcement of Intellectual Property Rights

EPC

European Patent Convention

EPO

European Patent Office

ETSI

European Telecommunications Standards Institute

xxii Abbreviations EU

European Union

FRAND

Fair Reasonable and non-discriminatory

Gerichtshof Den Haag Court of Appeal of the Hague Hoge Raad

Dutch Supreme Court

INN

International non-proprietary name

INPI

French National Institute of Industrial Property (Institut National de la Propriété Industrielle)

IPC

The French Intellectual Property Code (Code de la propriété intellectuelle)

LG

Landesgerichte (German district court)

MA

Marketing authorisation

Medicines Directive

Directive 2001/83/EC of the European Parliament and of the Council of 6 November 2001 on the Community code relating to medicinal products for human use (as amended)

Member State

A Member State of the European Union

MHRA

Medicines & Healthcare products Regulatory Agency

OLG

Oberlandesgericht (German district appeal or higher court)

Paediatric Regulation

Regulation (EC) 1901/2006 of the European Parliament and of the Council of 12 December 2006 on medicinal products for paediatric use (as amended)

Plant Products SPC Regulation

Regulation (EU) 1610/96 of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products

Protocol

Protocol on Interpretation of Article 69 of the EPC

Rechtbank Den Haag

District Court of the Hague

Rules of Procedure

Rules of Procedure of the Unified Patent Court (18th draft of 19 October 2015, as amended on 30 June 2016)

SEP

Standard essential patent

SmPC

Summary of Product Characteristics

SPC

Supplementary protection certificate

SPC Regulation

Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products

TGI Paris

Tribunal de Grande Instance de Paris (Paris court of first instance)

Translation Regulation

Regulation (EU) No 1260 / 2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements

Abbreviations xxiii New Exemption

The experimental use exemption introduced to the UK Patents Act 1977 by Legislative Reform (Patents) Order 2014 No 1997

Participating Member State

A Member State that signed the UP Regulation on 17 December 2012

PIP

Paediatric Investigation Plan

PIL

Patient information leaflet

UK

United Kingdom of Great Britain and Northern Ireland

UKIPO

UK Intellectual Property Office

TBA

Technical boards of appeal of the EPO

TRIPS

Trade-Related Aspects of Intellectual Property Rights

Unitary Patent

European patent with unitary effect

UP Regulation

Regulation (EU) No 1257/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection

UPC

Unified Patent Court

UPC Agreement

Agreement on a Unified Patent Court 19 February 2013

WTO

World Trade Organization

xxiv

TABLE OF CASES References are to page number 1-800 Flowers Inc v Phonenames Ltd [2000] FSR 697, [2000] ETMR 369 (20 December 1999), ChD�� 66 A, M. X v Peugeot, RG 2000/14939 (3 January 2002), CA Paris, 4�� 126 A method of functional analysis/GEORGES T 953/94 (unpublished) (15 July 1996)�� 244 A pneumatic tire/GOODYEAR T 221/91 (unpublished) (8 December 1992)�� 283 AB LivsHalsa medvetandeutveckling v E. D. c/o Regus Business Center AB and HDT International Ltd (15 October 2002) MD 2002:25�� 97 ABB AB / Siemens Aktiengesellschaft ALSTOM Power AG T 0473/13 (11 May 2016) (unpublished)�� 285 Abbott/Evysio Docket no 07/11208 (14 January 2009), TGI Paris 3.3, France�� 154 Abbott Laboratories Ltd v Evysio Medical Devices ULC [2008] EWHC 800 (Pat), [2008] RPC 23 (21 April 2008).��14, 42, 293 Abdichtsystem X ZR 120/15 GRUR 2017, 785 (16.5.2017), BGH��112, 114 Abgestuftes Getriebe GRUR 2002, 801, 803, BGH�� 456 Abraxis Bioscience LLC v Comptroller General of Patents [2017] EWHC 14 (Pat), [2017] 1 WLUK 109 (13 January 2017), Pat Ct�� 413 Abraxis Bioscience LLC v Comptroller General of Patents, Case C-443/17, EU:C:2018:1020 (13 December 2018), Ad-Gen’s Opinion�� 413 Abraxis Bioscience LLC v Comptroller General of Patents, Case C-443/17, EU:C:2019:238 (21 March 2019), CJEU�� 413 Abraxis II 14 W (pat) 5/18 GRUR 2021, 950 (26 June 2020), BPatG�� 413 Absorbent article/UNICHARM T 2096/12 (unpublished) (23 February 2017)�� 377 Accord & Sandoz v Astrazeneca 334/2016 (20 May 2016), Spanish Sup Ct�� 13 Accummulate AB v Finansiell ID-Teknik BID AB, case no PMT 6877-17 (17 April 2019), Swedish Pat and Market Ct�� 517 Accumulate AB v Seamless, joined cases no PMT 15746-13 and PMT 11153-14 (15 September 2017), Swedish Pat and Market Ct�� 338 Accumulate AB i likvidation i konkurs v Swedish Patent Office, case no PMÖÄ 3226-20 (24 June 2021), Swedish Pat and Market CA��251, 338 Acetals/NEW JAPAN CHEMICAL T 1081/01 (unpublished) (27 September 2004)�� 282 Acieries de Bonpertuis SAS v D 16/06011 (30 March 2017), TGI Paris; confirmed by CA Paris, case no 17/08434 (15 January 2019).�� 449 ACK/NACK-transmission with different power levels/LG T 512/07 (unpublished) (22 January 2010)�� 355 Aclidinium for treatment of asthma/ALMIRALL T 2015/20 (unpublished) (23 February 2021).��404, 407 Acorda Therapeutics T 0799/16 (unpublished) (4 September 2019)��324, 355

xxvi Table of Cases Actavis v Eli Lilly (Pemetrexed) O2015_004, (9 March 2017), Swiss Fed Pat Ct�� 37, 60–61 Actavis v MSD 07/16296 (28 September 2010), TGI Paris�� 300 Actavis Group HF v Eli Lilly & Co Joined with Medef EHF v Eli Lilly and Co [2012] EWHC 3316 (Pat), [2012] 11 WLUK 796 (27 November 2012)�� 153, 503, 509 Actavis Group HF v Eli Lilly & Co [2013] EWCA Civ 517, [2013] RPC 37 (21 May 2013)��503, 509 Actavis Group PTC EHF v Eli Lilly and Co case no PMT 5263-15 (19 May 2017), Swedish Patent and Market Ct�� 389 Actavis Group PTC EHF v Eli Lilly & Co [2015] EWHC 3294 (Pat), [2016] RPC 12 (16 November 2015)��297, 396 Actavis Group PTC EHF v ICOS Corp [2016] EWHC 1955 (Pat), [2016] 8 WLUK 146 (10 August 2016)��68, 69, 350 Actavis Group PTC EHF & Ors v ICOS Corp & Anor [2016] EWHC 2690 (Pat), [2016] 6 Costs LR 1051, (11 October 2016)�� 232 Actavis Group PTC EHF v ICOS Corp [2017] EWHC 2880 (Pat), [2017] 11 WLUK 258 (10 November 2017)�� 326 Actavis Group PTC EHF v ICOS Corp [2017] EWCA Civ 1671, [2018] RPC 7 (1 November 2017)�� 293, 326–327 Actavis Group PTC EHF v ICOS Corp [2019] UKSC 15, [2019] Bus LR 1318 (27 March 2019)�� 3, 4, 312, 319, 324, 327–328, 343, 345, 346–347, 353 Actavis Group PTC EHF v Warner-Lambert Co LLC T 258-15 (12 August 2016), Swedish Pat and Market Ct��376, 389 Actavis Group PTC EHF and Actavis UK Ltd v Boehringer Ingelheim Pharma GmbH & Co KG Case C-577/13 ECLI:EU:C:2015:165 (12 March 2015), CJEU�� 410, 417, 420, 421, 425–426, 427 Actavis Group PTC EHF and Actavis UK Ltd v Sanofi Case C-443/12 ECLI:EU:C:2013:833 (12 December 2013), CJEU�� 417, 420, 421, 422, 425, 426, 427 Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48, [2017] RPC 21, [2017] Bus LR 1731 (12 July 2017)�� 4, 21, 22, 23, 24, 25, 26, 27, 36, 38–9, 49, 52–3, 62, 273, 504 Actavis UK Ltd v Janssen Pharmaceutica NV [2008] EWHC 1422 (Pat) [2008] FSR 35 (30 June 2008), Pat Ct�� 302, 303, 304, 311 Actavis UK Ltd v Merck & Co Inc [2008] EWCA Civ 444, [2008] RPC 26 (21 May 2008), CA��299, 303 Actavis UK Ltd v Novartis AG [2010] EWCA Civ 82, [2010] FSR 18 (17 February 2010)��330, 331 ADD2 Research and Development Ltd v Dspace Digital Signal Processing and Control Engineering GmbH [2020] EWHC 912 (Pat), [2020] 3 WLUK 643 (18 March 2020)�� 515 Add2 Research and Development Ltd v Space Digital Signal Processing & Control Engineering GmbH [2021] EWHC 1630 (Pat), [2021] 6 WLUK 222 (17 June 2021)�� 18 Adhesion enhancer/ Otis Elevator Co T 1099/16 (unpublished) (11 December 2020).�� 298 Admissibility of Disclaimer G1/03, G2/03 [2004] EPOR 33 (8 April 2004)��405, 408

Table of Cases xxvii Adrenaline/MEDCO RESEARCH T 233/96 (unpublished) (4 May 2000)�� 301 Adsorbent for LDL/KANEGAFUCHI T 0936/96 (unpublished) (11 June 1999)�� 345 Advanced Neuromodulation Systems Inc T 1731/12 (unpublished) (15 February 2019)�� 260 Aerni SA v Vulcain et Studio (27 June 1972), BGE 98 II 325, Swiss Federal Sup Ct�� 36 Aerocrine v Medisoft A/11/3039 (28 June 2012), Liège Commercial Ct�� 338 Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Patent Application [2006] EWCA Civ 1371, [2007] RPC 7 (27 October 2006)�� 243, 244, 246, 248–249, 265 AGA v Occlutech 11/00304 (25 May 2012)�� 33 AGA v Occlutech C-09-407582-HA ZA 11-2682 (4 March 2015), Rechtbank Den Haag��285, 286 AGA Medical Corp v Occlutech GmbH, case no T 2980-11 (27 March 2013), Svea CA�� 35 Aga Medical Corp v Occlutech (UK) Ltd [2014] EWHC 2506, [2015] RPC 12 (22 July 2014), Pat Ct�� 284 AGFA Graphics v Fujifilm C/09/494257 / KG ZA 15-1216 (27 November 2015), Rechtbank Den Haag�� 497 Agrevo/Tiazoles T-939/92 [1996] EPOR 171, [1996] OJ EPO 309 (12 September 1995)��405, 408 Agrosol SA v Sodifag Sarl, 4e ch; PIBD 2005, n° 819, III, 685 (7 October 2005), Paris CA�� 126 Airbus Helicopters v Bell Helicopter, no 13/00552 (20 March 2015), CA Paris 5.2�� 136, 389, 394 Airbus Industrie GIE v Patel [1999] 1 AC 119, [1998] 2 WLR 686 (2 April 1998), HL�� 186 Aircraft communication method/BOEING T 1127/16 (unpublished) (18 February 2021)�� 305 Air filled microballoons/BRACCOT 270/97 (unpublished) (20 December 1999)�� 277 Akebia Therapeutics Inc v Fibrogen, Inc [2020] EWHC 866 (Pat), [2020] RPC 15 (20 April 2020)��39, 374, 375, 528, 529 Akteneinsicht XXIV X ZR 33/19 GRUR 2020, 327 (14 January 2020), BGH�� 541 Aktiebolaget Hags Mekaniska v Aktiebolaget Svenska Cykelstallfabriken NJA 1986, 398, Swedish Sup Ct�� 517 Aktiebolaget Hassle v Astra France SA RG 1997/26191 (19 January 2000), Paris CA�� 112 Aktiebolaget Hassle v Lek DD Ljubljana (omeprazole), 98-13.641 (30 January 2001), Cass Com�� 69 Al Rawi & Ors v The Security Service & Ors [2011] UKSC 34, [2012] 1 AC 531 (13 July 2011)�� 539 Alfa Laval v SWEP, case no PMT 1387-16 (16 November 2018), Swedish PMC�� 514 Alkermes / Ethypharm RG10/05718, 21 December 2012, TGI Paris�� 84 Alkylendiamine II X ZR 4/75 GRUR 1977, 100 (25 June 1976), BGH��77, 513 Allen Hanburys Ltd v M and MH Ltd (1 September 1999), TGI Paris��284, 285 Allergan v Orifarm C/09/534204 / KG ZA 17-771 (15 September 2017), Rechtbank Den Haag�� 140 Allgon AB v Moteco AB, case no 97-440, Swedish Patent CA�� 360 Alligator Bioschience AB v Maxygen Inc NJA 2006, s 354, Swedish Sup Ct�� 505 Alpha-interferon II/BIOGEN T 0500/91 (unpublished) (21 October 1992)�� 10

xxviii Table of Cases Alpi Pietro E Figlio & C and Others v John Wright & Sons (Veneers) Ltd [1971] FSR 510, 518 (29 June 1971)�� 93 Alsapan SAS v Classen Industries GmbH 14/03974 (8 September 2016), TGI Paris�� 379 American Home Products Co v Novartis [2000] RPC 547 (6 December 1999), ChD; [2000] EWCA Civ 231, [2001] RPC 159, [2000] IP & T 1308�� 43 American Cyanamid Co v Ethicon Ltd [1975] AC 396 (5 February 1975), HL�� 192, 199, 200 Amgen v Accord, C/09/598605 / KG ZA 20-798, 18 February 2021, Rechtbank Den Haag�� 202 Amgen Inc v Sanofi-Aventis Groupe SA [2020] EWHC 2818 (Pat), [2020] 10 WLUK 288 (22 October 2020).�� 487 Amorphous Lercanidipine Hydrochloride/RECORDATI T 1085/13 (unpublished) (9 November 2018)��287, 290 Analogs/AMGEN T 1208/97 (unpublished) (3 November 2000)�� 272 Anan Kasei Co, Ltd & Rhodia Operations SAS v Molycorp Chemicals & Oxides (Europe) Ltd [2016] EWHC 1722 (Pat), [2017] FSR 13 (14 July 2016), Pat Ct�� 499–500 Anan Kasei v Neo Chemicals and Oxides [2019] EWCA Civ 1646, [2020] FSR 8 (9 October 2019)�� 378 Anan Kasei Co, Ltd v Neo Chemicals & Oxides (Europe) Ltd [2020] EWHC 2503 (Pat), [2020] 9 WLUK 357 (16 September 2020)�� 539 Anan Kasei Co Ltd & Anor v Neo Chemicals & Oxides (Europe) Ltd & Ors (Confidentiality No 2) [2021] EWHC 3295 (Pat), [2022] FSR 10 (6 December 2021)�� 539 Angle mirror/LUCHTENBERG T 84/83 (unpublished) (29 September 1983)�� 282 Anki v Stadlbauer 2608/2015 (5 February 2018), Tribunale di Roma�� 502 Anne D; Sarl AD v Hermes Sellier SA 12/16589 (12 February 2014), Paris CA�� 329 Anonymous v Inventor 86-19166 (21 June 1988), Cass Com�� 445 Anthradipyrazol X ZB 3/69 GRUR 1970, 408 (24 February 1970), BGH�� 531 Antioxydant/TELECOMMUNICATIONS T 173/83 [1987] OJ EPO 465 (1 July 1985)��275, 279 Anywayup Cup Case. See Haberman v Jackel International Aortic graft for treating abdominal aortic aneurysms/BARONE T 1407/08 (unpublished) (20 March 2013)�� 260 AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40, [2014] RPC 27 (28 January 2014)�� 305 AP-I complex/SALK INSTITUTE FOR BIOLOGICAL STUDIES T 609/02 (unpublished) (27 October 2004)�� 390, 397, 402 Apimed Medical Honey Ltd v Brightwake Ltd (t/a Advancis Medical) [2012] EWCA Civ 5, [2012] RPC 17 (20 January 2012)�� 14 Apotex v Wellcome Foundation Ltd PI BD 2001 726 III 429 (15 September 2000), Paris CA�� 113 Apotex v Wellcome (HIV Retrovir) 1998/16047 and 1999/05928 (15 September 2000), CGI Paris�� 69 Apparatus for hair removal/IMPROVER T 754/89 (unpublished) (24 April 1991)�� 339 Apparatus for optical imaging and measurement/MIT T 0030/01 (unpublished) (29 June 2004)�� 293 Apparatus for sensing optical characteristics of a banknote/Crane Payment Innovations T 0131/15 (unpublished) (10 October 2019)�� 273 Appetite suppressant/DU PONT T 144/83 [1986] OJ EPO 301 (27 March 1986)�� 238, 260, 261 Apple v Samsung 200.096.074-01 (20 May 2014) Gerechtshof Den Haag�� 497

Table of Cases xxix Apotex v Wellcome (HIV Retrovir) 1998/16047 and 1999/05928 (15 September 2000), Paris CA�� 69 Apotex v Wellcome Foundation Ltd PIBD 2001 726 III 429 (15 September 2000), Paris CA�� 113 Appreturmittel 7 O 20/60 GRUR 1964, 679 (17 December 1963), LG München�� 513 Araxxe v Sigos, 19/06212 (28 April 2021), CA Paris�� 41 Arcelormittal v Voestalpine 09/23852 (21 March 2012), Paris CA�� 359 Archos SA v Koninklijke Philips NV ECLI:NL:RBDHA: 2017:1025, C/09/505587 / HA ZA 16-206 (8 February 2017), Rechtbank Den Haag��179, 181 Armor Inox v Kaufler, Docket no 09/16385 (10 September 2010), CA Paris 5.2�� 165 Arrow Generics Ltd v Merck & Co Inc [2007] EWHC 1900 (Pat), [2007] FSR 39 (31 July 2007), Pat Ct�� 141, 149, 152, 157, 158–159, 161, 162, 163, 164, 165 Arrow Plastic Aktiebolag v Aktiebolaget Kandre case no T-886-96 (7 June 2002), Stockholm Dist Ct.�� 220 ARS v Organon 15390 NJ 1995 33 (17 June 1994), Hoge Raad�� 128 ARS v Organon 15706 NJ 1997 41 (23 June 1995), Hoger Raad�� 128 Aryloxybenzaldehydes/SHELL T 20/81 [1982] OJ EPO 217 (10 February 1982)��317, 318 Arzneimittelgebrauchsmuster X ZB 7/03 GRUR 2006 135 (5 October 2005), BGH�� 301 AS v Aktiebolaget Splitkein�� 98 Asahi Kasei Kogyo KK’s Application, Re [1991] RPC 485 (9 May 1991), HL��271, 294 Asahi Medical Co Ltd v Macopharma (UK) Ltd [2002] EWCA Civ 466, (2002) 25(6) IPD 25037 (16 April 2002)�� 7 Assa Abloy v Ishak Issa case no T 27256-05 (22 December 2005), Stockholm Dist Ct�� 104 Association de deux colorants cationiques/L’OREAL T 2371/13 (unpublished) (4 July 2017)�� 398, 405, 408 Astellas Pharma Inc v Polpharma SA Pharmaceutical Works 4a O 282/10 (26 July 2012), LG Düsseldorf�� 134 Astellas Pharma Inc v Polpharma SA Pharmaceutical Works I-2 U 68/12 (5 December 2013), OLG Düsseldorf��132, 134 AstraZeneca/Resolution NJB 2018/1195 (8 June 2018), Hoge Raad, Netherlands��33, 41 AstraZeneca v Etypharm SA and Cipla Ltd, 15/02576 (14 November 2017), CA Paris�� 389 AstraZeneca v KRKA, case no B-528-16 (17 October 2018), Danish High Ct��21, 48 Astra Zeneca v Sandoz – Fulvestrant S2016_007 (10 August 2016), Swiss Fed Pat Ct�� 208 Astra Zeneca AB v Accord Healthcare Ltd, case no B 18135-13 (11 December 2014), Stockholm District Ct�� 68 AstraZeneca AB v Comptroller General of Patents, Designs and Trade Marks Case C-617/12 (14 November 2013 ECLI:EU:C:2013:761; rectification 17 January 2014 ECLI:EU:C:2014:28)��428, 432 AstraZeneca AB v Krka Sverige AB case no PMT 6900-16 (10 July 2017), Swedish Patent and Market CA�� 76 AstraZeneca AB v Sandoz A/S, case no PMO 10991-18 (8 February 2019), Swedish Patent and Market CA�� 196 AstraZeneca AB v Sandoz A/S case no PMT 8135-19 (18 December 2020), Swedish Patent and Market CA��229, 330 AT&T Knowledge Ventures LP’s Patent Application [2009] EWHC 343 (Pat), [2009] FSR 19 (3 March 2009), Pat Ct��244, 249

xxx Table of Cases Atlantic v Applimo, Campa et Noirot, 03-15415 (28 April 2004), Com Cas�� 105 Attends AB and Attends Healthcare AB v SCA Hygiene Products Aktiebolag, case no O 2688-11 (20 June 2011), Svea CA�� 196 Attorney General v Blake [2001] 1 AC 268, [2000] 3 WLR 625 (27 July 2000), HL�� 224 Attorney General v Guardian Newspapers Ltd (No 2) [1988] UKHL 6, [1990] 1 AC 109 (13 October 1988)�� 284 Auchincloss v Agricultural & Veterinary Supplies Ltd [1999] RPC 397 (29 October 1998), CA��124, 125 Auction method/HITACHI T 258/03 [2004] OJ EPO 575 (21 April 2004)�� 248 Audiosignalcodierung X ZR 69/13 GRUR 2015, 467 (3 February 2015), BGH��65, 111 Aufwärmvorrichtung X ZR 42/76 GRUR 1979 145 (24 October 1978).�� 454 Austrian Oberster Gerichtshof Obp /2/13 (8 May 2013)�� 279 Austrian Patent Office Board of Appeal Decision B 1/2011 (22 November 2012)�� 286 Austrian Supreme Patent and Trademark Chamber Op 1/12 (27 June 2012)�� 315 Austrian Supreme Patent and Trademark Chamber Op 3/13 (27 November 2013)�� 338 Authentication binding document with signature/VASCO T 2101/12 (unpublished) (24 January 2018)��317, 337 Autofelgen 14 c O 58/15 GRUR -RR 2016, 228 (10 March 2016), LG Düsseldorf,�� 503 Automatic selection of a marketing script/FRASER T 1141/17 (unpublished) (15 April 2021)�� 335 AutoStore Technology AS v Ocado Group Plc [2021] EWCA Civ 1003 (07 July 2021)�� 545 Availability to the public G1/92 [1993] OJ EPO 27 (18 December 1992)�� 280 Avalanche photodiodes T 409/90 [1993] OJ 40 (29 January 1991)�� 292 Aventis Inc v Apothecon BV & Ratiopharm BV, 299702 / KG ZA 07-1439 IEF 8683 (16 March 2010), Gerchtshof Den Haag��195, 288 Aventis v Hospira, Intas, Teva 10/56899, 10/56902, 10/56889 (19 August 2010), TGI Paris�� 69 Avery Dennison v Gemalto 17/14906 (9 January 2019), Cour de Cassation�� 379 B v Auckland District Law Society [2003] UKPC 38, [2003] 2 AC 736 (19 May 2003) (PC (NZ))�� 544 B v Sarl R Santé 15/12226 (21 April 2017), Paris CA�� 454 B2M Industries v Acome 06-17915 (20 November 2007), Cour de Cassation��27, 28 Balabel v Air India [1988] Ch 317, [1988] 2 All ER 246 (16 March 1988)�� 542 Balance wheel for watch 4A_282/2018 (4 October 2018), Swiss Federal Sup Ct�� 323 Balipro Sarl v Vinmer SA 11/05096 (6 June 2013), TGI Paris�� 143 Balipro c Vinmer 13/17363 (17 April 2015), Paris CA�� 143 Ballerinaschuh I ZR 187/16 GRUR 2018, 832 (11 January 2018), BGH�� 96 Bandfuhrungen 4c O 94/13 GRUR -RS 2019, 41064 (21 February 2019), LG Düsseldorf�� 112 Barcelona Commercial Court no 5, AJM B 75/2017, 12 September 2017�� 243 Basf v Bayer 13625 of (14 December 2016), Tribunale di Milano�� 502 BASF AG v Smithkline Beecham Plc [2003] EWCA Civ 872, [2003] RPC 49 (25 June 2003)�� 533 Basic Holdings v Ruby Decor C/09/504274 / KG ZA 16-100 (4 May 2016), Rechtbank Den Haag,�� 497 Batch mixer/M TEC T 234/91 (unpublished) (25 June 1993)�� 340 Baxter International Inc v Labdesign Aktiebolag case no T 513/96 (30 October 1997), Svea CA�� 104 BayObLG 101 VA 130/20 BeckRS 2020, 31524 (6 November 2020)�� 535

Table of Cases xxxi Bayer v Ceva, 19/56082 (11 September 2019), TGI Paris�� 40 Bayer v Ceva, C/09/576374 / KG ZA 19-621 (17 September 2019), PI judge Rechtbank Den Haag�� 195 Bayer v Teva, docket No 21/55930 (29 September 2021), TJ Paris�� 193 Bayer v Zhejiang (moxifloxacine) 06/16242 (28 May 2008), TGI Paris�� 69 Bayer CropScience AG v Deutsches Pantent- und Markenamt (6 December 2012), BGH��414 Bayer CropScience AG v Deutsches Pantent- und Markenamt Case C-11/13 ECLI:EU:C:2014:2010 (19 June 2014), CJEU�� 414 Bayer Pharma AG v Richter Richter Gedeon Vegyeszeti Gyar Nyrt et al Case C-688/17, ECLI:EU:C:2019:324, (11 April 2019), A-G’s opinion�� 205 Bayer Pharma AG v Richter Richter Gedeon Vegyeszeti Gyar Nyrt et al Case C-688/17, ECLI:EU:C:2019:722, (12 September 2019), CJEU��197, 203–205, 207 Bayer/Sandoz 5 NJ 2016/496 (February 2016), Hoge Raad, Netherlands��33–34 BDI Holding GmbH v Argent Energy Ltd [2019] EWHC 765, [2019] FSR 25 (IPEC) (27 March 2019)�� 24 BDP1 Phosphatase/MAX-PLANCK T 870/04 (unpublished) (11 May 2005)��238, 239 Beamocular AB v C-Rad Positions AB case no T 10360-16, Swedish Patent and Market CA�� 445 BearShare I ZR 169/12 GRUR 2014, 657 (8 January 2014), BGH�� 514 Beck v Ministry of Defence [2003] EWCA Civ 1043, [2005] 1 WLR 2206 (11 June 2003)�� 528 Bejaro Brandskyddsforetaget Aktiebolag v American Pacific Corporation (18 May 2004) MD 2004:14�� 97 Belgische Vereniging van Auteurs, Componisten en Uitgevers CVBA (SABAM) v Netlog NV Case C-360/10 ECLI:EU:C:2012:85 (16 February 2012), CJEU�� 210 Bell Helicopter v Airbus Helicopter, 15-20.554 (5 July 2017), Cass Com�� 394 Beloit Technologies Inc v Valmet Paper Machinery Inc [1995] RPC 705 (28 April 1995), ChD (Pats Ct).�� 270 Berechtigte Gegenabmahnung I ZR 17/18 GRUR -Prax 2021, 263 (21 January 2021), BGH�� 95 Besonderer Mechanismus X ZR 56/09 GRUR 2011, 995 (12 July 2011), BGH�� 95 Best Buy Co Inc v Worldwide Sales Corp Espana SL [2011] EWCA Civ 618, [2011] Bus LR 1166, [2011] FSR 30 (24 May 2011)�� 93 Bestattungsbehaltnis I-2 U 90/13 GRUR -RR 2014, 315 (6 March 2014), OLG Düsseldorf��96, 97 Betts v Willmott (1870–71) LR 6 Ch App 239, Lord Chancellor�� 137, 457, 482 BGE 129 III 588, Swiss Federal Sup Ct��91, 117 BGE 139 III 110 (5 February 2013), Swiss Federal Sup Ct�� 478 BGH 1 StR 286–99 NJW 1999, 3788 (15 September 1999)�� 535 BGH I ZR 59/72 BeckRS 1973, 31066482 (23 November 1973)�� 522 BGH II ZR 159/89 NJW 1990, 3151 (11 June 1990)�� 517 BGH III ZB 2/06 NJW 2007, 155 (26 October 2006).�� 517 BGH III ZR 159/63 NJW 1964, 1414 (4 May 1964)�� 517 BGH IV ZR 88/19 NJW-RR 2020, 1425 (23 September 2020)�� 532 BGH V ZB 210/09 NJW-RR 2011, 136 (21 October 2010).�� 514 BGH VII ZB 96/17 NJW 2020, 1074 (15 January 2020)�� 525 BGH IX ZR 149/91 NJW 1992, 3096 (4 June 1992)�� 535 BGH X ZB 5/84 BeckRS 1984, 5234 (27 September 1984), Germany�� 390

xxxii Table of Cases BGH XI ZR 277/05 NJW 2007, 2989 (26 June 2007)�� 520 BGH XII ZR 120/04 NJW 2007, 2394 (15 November 2006)�� 520 Biegevorrichtung X ZR 32/99 GRUR 2002 231 (13 November 2001), BGH�� 144 Big Bus Co Ltd v Ticketogo Ltd [2015] EWHC 1094 (Pat), [2015] FSR 32 (28 April 2015)�� 516 BillerudKorsnäs Aktiebolag v C Gubler, case no PMT 15230–18 (17 April 2020), Swedish Pat and Market Ct�� 322, 360, 361 Bimetallic catalyst/INTEVEP T1465/05 (unpublished) (18 March 2009)�� 283 Bind-O-Matic v Boreco, case no T 7-349-87 (7 December 1990), Stockholm DC�� 514 Bind-O-Matic v Boreco, case no O 89-91 (22 January 1992), Svea CA�� 514 Binocular telescope/SWAROVSKI OPTIK T 0267/03 (unpublished) (28 September 2005)�� 278 Biogen v Celltrion C/09/531270 / KG ZA 17-519 (12 May 2017), PI judge Rechtbank Den Haag�� 195 Biogen Inc v Medeva Plc [1995] RPC 25, [1995] FSR 4 (27 October 1994), CA�� 293 Biogen Inc v Medeva Plc [1996] UKHL 18, [1997] RPC 1 (31 October 1996)��357, 363, 364–365, 375, 381 Biogen Inc v Smithkline Beecham Biologicals SA Case C-181/95 [1997] ECR I-00357 (23 January 1997), ECJ�� 424 Bispecific antibody/ DIASOURCE T 0032/17 (unpublished) (2 July 2020)�� 298 BL Macchine Automatische v Windmoeller KG 19550 GRUR Int 2005 264 (19 December 2003), Corte Suprema di Cassazione, Italy�� 502 Blasenfreie Gummibahn I X ZR 7/00 GRUR 2004 47 (24 September 2003), BGH��376, 394 Blasenfreie Gummibahn II X ZR 114/00 GRUR 2004, 268 (30 September 2003), BGH �� 513 Blasfolienherstellung X ZR 126/01 GRUR 2005, 569 (30 March 2005), BGH�� 523 Blood separation systems/FENWAL T 1075/06 (unpublished) (17 May 2011)�� 260 Blue Gentian LLC v Tristar Products (UK) Ltd [2013] EWHC 4098 (Pat), [2013] 12 WLUK 810; [2015] EWCA Civ 746, [2015] 7 WLUK 725�� 345 Bodenseitige Vereinzelungseinrichtung GRUR 2004, 1023 (7 September 2004), BGH, Germany�� 8 Bodenwaschanlage X ZR 137/99 GRUR 2001 223 (14 November 2000), BGH�� 138 Boegli Gravures c. Darsail 11-18440 (20 November 2012), Cour de Cassation�� 10 Boegli-Gravures SA v Darsail-Asp Ltd [2009] EWHC 2690 (Pat), [2009] 10 WLUK 754 (29 October 2009)��66, 111 Boehringer v Kirin Amgen 15623 NJ 1995/103 (21 April 1995)�� 128 Boehringer v Kirin-Amgen NJ 1996, 462 (21 April 1995), Hoge Raad�� 211 Boehringer v Teva 324094 / KG ZA 12-319 (15 August 2012), Rechtbank Utrecht�� 75 Boehringer Mannheim v Kirin Amgen IEPT 20000127 (27 January 2000), Gerechtshof Den Haag�� 360 Boehringer Mannheim/ Kirin Amgen ECLI:NL:GHSGR:2000:AM2907 (27 January 2000), Gerechtshof Den Haag�� 364 Bolton v Reckitt Benckiser, 14/04698 (18 December 2015), TGI Paris�� 289 Bombardier v Stadler – Railway Vehicle with a Propulsion Mechanism 4A_427/2016 (28 November 2016), Dutch Fed Sup Ct�� 281 Bon v SARL Theirart 15/09231 (12 January 2017), TGI Paris�� 459 Bornemann / Houttuin 02/3036 (2 July 2003), Rechtbank Den Haag�� 340 Boston Scientific v Edwards Lifesciences C/09/548434 / KG ZA 18-176 (15 May 2018), Rechtbank Den Haag�� 497

Table of Cases xxxiii Boston Scientific v Expandable Grafts Partnership and others, Docket no 97/06630 (28 October 1998), TGI Paris, 3.3�� 154 Bottle dispenser/VITLAB T 252/06 (unpublished) (6 May 2008)�� 340 Bourjois and Geka 03-16.532 and 03-18.818 (22 March 2005), Cour de Cassation��11, 379 BPatG 3 Ni 11/01 BeckRS 2012, 14034 (7 March 2002)�� 486 BpatG, 11 W (pat) 176/82 Mitt 1984, 190 (2 May 1983)�� 344 BPatG 10 W (pat) 53/06 (6 September 2007)�� 454 Brain stimulation/CLEVELAND T 1802/13 (unpublished) (10 November 2016)�� 245 Break-stem blind rivet/AVDEL SYSTEMS T 896/92 (unpublished) (28 April 1994)�� 274 Bristol Myers Squibb v Aventis Pharma SA, case no T 1248-98 (6 December 2001), Svea CA�� 361 Bristol-Myers Squibb v Baker Norton [1999] RPC 253 (20 August 1998), Pat Ct�� 302 Bristol Myers Squibb Co v Baker Norton Pharmaceuticals Inc [2001] RPC 1, (2001) 58 BMLR 121 (23 May 2000), CA�� 299 Bristol-Myers Squibb Co v Cyanamid Nordiska Aktiebolag, case no T 7-536-93 (15 June 1995), Stockholm District Ct��68, 202 British Acoustic Films Ltd v Nettlefold Productions Ltd (1936) 53 RPC 221 (1 January 1935), High Ct�� 14 British Airways Board v Laker Airways Ltd [1985] AC 58, [1984] 3 WLR 413 (19 July 1984), HL�� 186 British Coal Corporation v Dennis Rye Ltd (No 2) [1988] 1 WLR 1113, [1988] 3 All ER 816 (25 February 1988), CA�� 544 British Thomson-Houston v Corona Lamp Works (1922) 39 RPC 49, HL�� 42 Broccoli/PLANT BIOSCIENCE G2/07; Tomatoes/STATE OF ISRAEL G1/08 [2012] OJ EPO 130 and 206 (9 December 2010)�� 258 Brokk Aktiebolag v Husqvarna AB, case no T 11829-12 (15 January 2014), Stockholm District Ct,�� 35 Bromma Conquip Aktiebolag v Ctab Containers Spreaders Aktiebolag, case no T 1253-89 (12 December 1990), Svea CA�� 65 Brown Boveri, NJA 1965 not A 13, Swedish Sup Ct�� 219 Brugger v Medic-Aid Ltd (No 2) [1996] RPC 635 (12 June 1996), Pat Ct�� 325, 328, 347 BSH Hausgerate GmbH v Electrolux, case no PMT 1663-20 (21 December 2020), Swedish Pat and Market Ct�� 501 BSN medical GmbH et al v Molnlycke Health Care AB case no T 4333-08 (21 June 2010), Stockholm Dist Ct�� 505 Bugnot v X 00-15495 (26 February 2002), Cour de Cassation�� 455 Buhler AG v FP Spomax SA [2008] EWHC 823 (Ch), [2008] FSR 27 (21 April 2008)�� 342 Buprenorphine patch/EURO-CELTIQUE T 0259/15 (unpublished) (25 July 2017)�� 324 C Van Der Lely v PJ Zweegers en Zonen 91-13931 (23 March 1993), Cas Com�� 165 C v SA Spie Batignolles 02/01353 (5 January 2006), TGI Paris�� 449 C10-Alkoxylate/BASF T 1948/10 (unpublished) (26 June 2014)�� 378 CA Paris, 88.18686 (31 May 1990).�� 28 CA Paris, 28 January 1994�� 500 CA Paris, 4e ch., s A, 29 November 1995, PI BD 1996, III, 89�� 11 CA Paris, 18 May 2005, no° 03/13550�� 9 CA Paris, 02/17421 (20 May 2005)�� 379 CA Paris, 6 January. 2006; PI BD 2006, III, 241�� 11

xxxiv Table of Cases CA Paris, 1 March 2006: PI BD 2006, no° 829, III, 313�� 11 CA Paris, Pole 5 Chamber 1 docket No 10-19186 (12 December 2012), confirmed on this point by the Cour de Cassation, commercial court, docket No 13-15862 (17 March 2015)�� 283 CA Paris, 11/03663 (21 December 2012)�� 443 CA Paris, 5.2, 2013/00552 (20 March 2015)�� 8 CA Paris, 13/15831 (3 April 2015)�� 379 CA Paris, Pole 5 Chamber 1 docket No 10-19186 (12 December 2012), confirmed on this point by the Cour de Cassation, commercial court, docket No 13-15862 (17 March 2015)�� 283 CA Paris, Pole 5 Chamber 1 (Jan 12 2016) no 2013/13050�� 8 CA Paris, 15/12176 (28 November 2017)�� 28 CA Paris, 17/06356 (16 October 2018)�� 28 CA Paris 24 November 2020, no° 20/04780�� 500–501 Cahouet SA, Vivisol France, Sol France v Air Liquide Sante, 10/06602 (22 May 2013), CA Paris 5.1�� 108 Campbell v Mirror Group Newspapers [2004] UKHL 22, [2004] 2 AC 457 (6 May 2004), HL�� 284 Cancer treatment/BOARD OF REGENTS, THE UNIVERSITY OF TEXAS SYSTEM, T1780/12 (unpublished) (30 January 2014)��78, 262 Cardiac pacing/TELECTRONICS T 82/93 [1996] OJ EPO 274 (15 May 1995)�� 260 Carl Freudenberg v Stadsing SH2017.T-14-14S, Sø- og Handelsretten�� 314 Carrera & Texas v Muller 16-28.322 and 17-14.673 (23 January 2019), Cour de Cassation��28, 226 Carrier substrate for electronic components/SCHOTT T 51/10 (unpublished) (24 March 2015)�� 277 Carvediol II X ZR 236/01 A GRUR 2007 404 (19 December 2006), BGH�� 300 Casco Adhesives AB v Dynea AS, case no T 1327-09 (5 May 2009), Stockholm Dist Ct�� 219 Case 04/09812 (14 September 2005), Paris CA�� 465 Case 05/09022 (1 July 2008), TGI Paris�� 340 Case 06/0061 (12 February 2008), TGI Paris�� 340 Case AD 1995 no 26, Sweden�� 447 Case no 04-329 (6 February 2009), Swedish Patent CA�� 338 Case no 14-159 (15 August 2016), Swedish Patent CA�� 338 Cass.Comm No 91-15.337 (18 January 1994)�� 297 Cass.Comm No 91-20.644 (4 January 1994)�� 271 Cass.Comm No 94-10.433 (17 October 1995)�� 320 Cass.Comm No 94-15283 (12 March 1996)��268, 276 Cass.Comm No 94-18.909 (18 June 1996)�� 297 Cass.Comm No 98-20.122 (18 December 2001)�� 271 Cass.Comm No 09-71.934 (15 March 2011)�� 456 Cass.Comm 4 July 1995, docket no 93-15575�� 500 Cass.Comm 25 April 2006, appeal no°04-15.995�� 72 Cass.Comm, 11-27686 (14 May 2013)��268, 276 Cass.Comm No 15-19.726 (6 December 2017)�� 300 Cass.Comm No 20-16094 (7 July 2021), French Suprem Ct�� 230 Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183, [1981] FSR 60, (27 November 1980) HL��53, 62, 273

Table of Cases xxxv Cavitron Inc, 91-19915 (4 January 1994), Cass Com�� 454 Cederoth AB and Pharbio Medical International Aktiebolag v Hela Pharma AB, NJA 2017, 9, Swedish Supreme Ct��197, 206 Cellulase/NOVOZYME T 1336/04 (unpublished) (9 March 2006)�� 287 Centrafarm BV v Sterling Drug Inc Case 15/74 [1974] ECR 1147, [1975] FSR 161 (31 October 1974), ECJ��137, 150 Cephalon Inc v Orchid Europe Ltd [2010] EWHC 2945 (Pat), [2011] 11 WLUK 518 (19 November 2010), Pat Ct�� 199 Cerebral ischemia/EHRENREICH 293/07 (unpublished) (24 July 2008)�� 324 Cetirizin 3 Ni 37/07 GRUR 2010 50 (11 November 2008), BPatG�� 376, 394, 395 Checkpoint simulation/ACCENTURE T 531/09 (unpublished) (3 May 2012).�� 248 Chimeric gene/BAYER (T 890/02) [2005] OJ EPO 497 (14 October 2004)�� 7, 17 Chimeric genes in plant cells/MONSANTO T 387/94 (unpublished) (7 March 1997)�� 324 Chiron Corpn v Organon Teknika Ltd (No 3) [1994] FSR 202 (5 October 1993), ChD (Pat Ct)�� 381 Chiron Corpn v Organon Teknika Ltd (No 10) [1995] FSR 325 (29 November 1994), ChD (Pat Ct)�� 214 Chiron Corp v Evans Medical Supplies Ltd [1998] RPC 517, (1998) 43 BMLR 39, ChD (Pat Ct)�� 368 Cholesterin-Test 4a O 4/00 InstGE 3, 8 (19 December 2002), LG Düsseldorf�� 503 Chronic Hepatitis C 4a O 145/12 (14 March 2013), OLG Düsseldorf�� 85 Ciba-Geigy v Ote Optics NJ 1995/391 (13 January 1995) Hoge Raad, Netherlands�� 32–33, 61 Ciba Geigy/Voorbraak, 16 November 1984, nr. 12309, Dutch Supreme Ct�� 206 Cipla Ltd v Glaxo Group Ltd [2004] EWHC 477 (Pat), [2004] RPC 43 (19 March 2004)�� 18, 342, 345, 346 Circuit simulation I/INFINEON TECHNOLOGIES T 1227/05 [2007] OJ EPO 574 (13 December 2006)�� 248 Cistus Incanus 2 U 54/11 (31 January 2013), OLG�� 85 Civil Aviation Authority v Jet2.Com Ltd, R (on the Application of) [2020] EWCA Civ 35, [2020] QB 1027 (28 January 2020)�� 542 Classification method/COMPTEL T 1784/06 (unpublished) (21 September 2012)�� 337 Claydon Yield-O-Meter v Mzuri Ltd & Anor [2021] EWHC 1007 (IPEC), [2022] FSR 1 (22 April 2021)�� 281 Cleaning apparatus for conveyor belt/FIVES-CAIL BABCOCK T 32/81 OJ 1982, 225 (5 March 1982)�� 9 Cleaning plaque/ICI T 290/86 [1992] OJ EPO 414 (13 November 1990)�� 261 Cleveland Graphite Bronze Co v Glacier Metal Co (1950) 67 RPC 149, [1950] WN 326 (23 June 1950), HL.�� 42 Clipboard formats I/MICROSOFT T 424/03 (unpublished) (23 February 2006)�� 248 Closing a heat exchange tube/ ABB REAKTOR T 1072/92 (unpublished) (28 June 1994)�� 339 Coated tablets/JOHNSON & JOHNSON T 0282/12 (unpublished) (9 November 2017)��292, 295 Coaxial Connector/AMP T 260/85 [1989] OJ EPO 105 (9 December 1987)�� 306 Coco v AN Clark (Engineers) Ltd [1969] RPC 41 (1 July 1968), ChD�� 284 Coflexip v Stolt Comex [2001] IP & T 1332�� 43 Coflexip SA v Stolt Offshore MS Ltd [2003] EWCA Civ 296, [2003] FSR 41 (13 March 2003)�� 219

xxxvi Table of Cases Coil Spring S2018_006 (8 February 2019), Swiss Fed Pat Ct�� 198 Coin Controls Ltd v Suzo International (UK) Ltd [1999] Ch 33 (26 March 1997), Pat Ct�� 498–499, 500 Collagen casing/DEVRO T 2453/09 (unpublished) (5 October 2011)�� 342 Collagenase I, BGH�� 301 Collingwood Lighting Ltd v Aurora Ltd [2014] EWHC 228 (Pat), [2014] 2 WLUK 256, (10 February 2014), Pat Ct��147, 220 Colloidal binder/PAROC T 230/07 (unpublished) (5 May 2010)�� 290 Combustion engine/LUCAS 0426/88 [1992] OJ EPO 427 (9 November 1990)�� 17 Comex Electronics v Fibersystem AB, case no O 2005-10 (18 June 2010), Svea CA�� 521 Composite prelaminated tapes/3M T 37/98 (unpublished) (17 May 2001)�� 283 Composition and wipe/KIMBERLY-CLARK T 2070/13 (unpublished) (12 April 2018)��362, 365 Composition Contraceptive/BAYER SCHERING T 1635/09 [2011] OJ EPO 542 (27 October 2010)�� 261 Computer program product/INTERNATIONAL BUSINESS MACHINES CORPORATION T 1173/97 [1999] OJ EPO 609 (1 July 1998)�� 248, 265, 337 Computer-related invention/VICOM T 208/84 [1987] OJ EPO 14 (15 July 1986)��243, 244, 248 Comrod Utility System AS v Melbye Skandinavia Sverige, case no PMT 8271-20 (4 December 2020), Swedish Patent and Market Ct�� 98 COMVIK/Hitachi T 641/00 [2003] OJ EPO 352 (26 September 2002)�� 242 Comviq GSM AB v Europolitan AB NJA 2000, 497, Swedish Supreme Ct�� 35 Concept microfibre c DME 12/11633 (31 March 1989), France�� 143 Condition required for priority claim G2/98 [2001] OJ EPO 413 (31 May 2001)��291, 292 Configuring proximity indication/HTC T 0984/15 (unpublished) (8 September 2020)�� 8 Conor Medsystems Inc v Angiotech Pharmaceuticals Inc [2008] UKHL 49, [2008] RPC 28 (9 July 2008)�� 319, 325, 327, 332, 385–386 Context-based information retrieval/PHILIPS T 2230/10 (3 July 2015)�� 337 Contraceptive method/BRITISH TECHNOLOGY T 74/93 [1995] OJ EPO 712 (9 November 1994)��238, 239 Contraceptive method/THE GENERAL HOSPITAL T 820/92 [1995] OJ EPO 113 (11 January 1994)�� 260 Controlling pension benefits system/PBS PARTNERSHIP T 931/95 [2001] OJ EPO 441(8 September 2000)�� 243 Conversant v LG, docket No 15/17037 (16 April 2019), CA Paris��182, 183, 185–186 Conversant Wireless Licensing v LG Electronics, Docket no 061/2019 (16 April 2019), CA Paris�� 155 Conversant Wireless Licensing SARL v Huawei Technologies Co Ltd [2018] EWHC 2549 (Ch), [2018] 5 Costs LR 1049 (2 October 2018).�� 187 Conversant Wireless Licensing SARL v Huawei Technologies Co Ltd [2020] EWCA Civ 1292, [2020] 10 WLUK 108 (8 October 2020)�� 305 Copan Italia SPA v LABFAB, case no PMT 5311-19 (3 April 2020), Swedish Patent and Market Ct�� 540 Copolymers/DUPONT T 124/87 [1989] OJ EPO 491 (9 August 1988)��288, 290 Core distribution Inc et Miral Conseil v Castorama France, Etablissements Browaeys et Axxom International Case 13-25.082 (23 June 2015), Cass Com�� 332–333

Table of Cases xxxvii Core/Miral v Axxom/Castorama/Browaeys Brame 12/07634 (26 April 2013), Paris CA�� 338 CoreValve Inc v Edwards Lifesciences AG [2009] EWHC 6 (Pat), [2009] FSR 8 (9 January 2009), Pat Ct��46, 124 Corino macchine SNC v M. X, 91-20417 (26 October 1993), Cass Com�� 27 Corte d’Appello di Milano, 10 March 2021�� 329 Corte di Appello di Milano, 14 May 2020, No 1094�� 112 Corte di Cassazione, 16 November 1990 No 11094�� 359 Corte di Cassazione, 19 April 2010, No 9291�� 269 Corte di Cassazione, No 22495 (16 October 2006), Italy�� 111 Corte di Cassazione (Cass Civ SS UU 05.07.2017, no 16601, Italy�� 221 Coventry v Lawrence [2014] UKSC 13, [2014] AC 822 (26 February 2014)�� 214 Crane AB v Arjowiggins Security SAS, case no T 11942-13 (13 March 2015), Svea CA�� 43 Credit Lyonnais v EGCD [1988] AC 1013, CA�� 118 Crimpwerkzeug III X ZR 193/03 GRUR 2919 858 (29 June 2010), BGH��273, 310 Crypthographie a cles publiques/FRANCE TELECOM T 27/97 (unpublished) (30 May 2000)�� 244 Custodiol I X ZB 12/00 GRUR 2002 523, BGH�� 29 Custodiol II X ZR 73/01 GRUR 2002 527, BGH�� 29 Cutting tools/AC MC T 0436/92 (unpublished) (20 March 1995)�� 275 D Bergh and Catway Sverige AB v Memoteknik Sweden AB, case no O 10502-10 (2 February 2011), Svea CA�� 521 Daiichi Sankyo Case C-6/11, [2011] ECR-I-12255, (25 November 2011), ECJ�� 417 Daspaco v von Allmen (urinal valve) O2014_002, (25 January 2016), Swiss Fed Patent Ct�� 37 Dansk Elektrolyse v Guldager, case no 505/2005 (27 March 2009) (U.2009/1523H), Danish Sup Ct��21, 22, 52 Dasatinib/BRISTOL-MYERS SQUIB T 0488/16 (unpublished) (1 February 2017)��384, 386–387, 391, 396, 398, 402–403, 404, 405 Dasatinib in the treatment of chronic myelogenous leukemia/ BRISTOL T 0950/13 (unpublished) (3 February 2017)�� 369–370, 391, 396–397, 402, 403, 404, 405, 408 Data communication system/CANON T 1045/12 (unpublished) (23 October 2018)�� 325 Data consistency management/ACCENTURE GLOBAL SERVICES T 1924/17, CLI:EP:BA:2019:T192417.20190729 (29 July 2019)�� 337 Data selection system/BRITISH TELECOMMUNICATIONS T 1143/06 (unpublished) (1 April 2009)��245, 246 Data structure product/KONINKLIJKE PHILIPS ELECTRONICS T 1194/97 [2000] OJ EPO 525 (15 March 2000)�� 245 Datenträger X ZB 4/92 GRUR 1995 113 (6 October 1994), BGH�� 359 Dearlove v Coombs [2007] EWHC 375 (Ch), [2008] EMLR 2 (28 February 2007)�� 66 Decision of the Administrative Council of 29 June 2017 amending Rules 27 and 28 of the implementing Regulations to the European Patent Convention (CA/D 6/17) [2017] OJ EPO A56�� 258 Deckenheizung X ZR 153/03 GRUR 2006 839 (13 June 2006), BGH�� 108–109, 114 Degussa AG T 1250/1 (14 May 2003)�� 368

xxxviii Table of Cases Delavage/CAYLA T 165/96 (unpublished) (30 May 2000)�� 282 DeLaval International AB v Lely Industries NV et al, NJA 2011, 270, Swedish Supreme Ct�� 224 Dellner Couplers v Voith Turbo Scharfenberg, case no O 214-04 (19 January 2004), Svea CA�� 521 Deodorant detergent/UNILEVER T 0585/92 [1996] OJ EPO 129 (9 February 1995)��275, 279 Depagne v Sogexi 03/06651(24 February 2005), Lyon CA�� 165 Depagne v Sogexi P.05-14707 (3 April 2007), Cass Com�� 165 Dermaconcept JMC v Laboratoire Bioderma SAS 15/00069 (7 July 2017), TGI Paris�� 261 Design & Display Ltd v OOO Abbott [2016] EWCA Civ 98, [2016] FSR 27 (24 February 2016)�� 226 Desmopressin X ZR 131/09 GRUR 2012, 895 (12 June 2012), BGH�� 144 Dexmedetomidin 2 U 30/17 (1 March 2018), OLG Düsseldorf; confirming LG Düsseldorf GRUR 2017 1107 (5 May 2017).�� 85–86, 115 Dexmedetomidin, X ZR 71/17 BeckRS 2019 28185 (17 September 2019), BGH�� 349 Dexmedetomidine 34R113/16m (11 May 2017), Vienna Oberlandesgerichte�� 304 DHL Express France SAS v Chronopost SA Case C-235/09 [2011] ECR I-2801 (12 April 2011), CJEU�� 210 Diabehältnis X ZR 162/00 GRUR 2004 411 (25 November 2003), BGH�� 312 Diagnostic Agent/BOEHRINGER T 99/85 [1987] OJ EPO 413 (23 October 1986)�� 318 Diagnostic methods G1/04 [2006] OJ EPO 334 (16 December 2005).��260, 263, Diastereomer/BAYER 12/81 [1982] OJ EPO 296 (9 February 1982)�� 266, 274, 277, 287 Diesel fuels/EXXON T 409/91 [1993] OJ EPO 40 (18 March 1993)�� 363 Digester/BELOIT T 37/96 (unpublished) (7 February 2000)�� 278 Diglycidverbindung X ZR 69/10 GRUR 2012 45 (13 September 2011), BGH��29, 55 Dipeptidyl-Peptidase-Inhibitoren X ZB 8/12 (11 September 2013), BGH�� 366, 367, 368, 381–382, 418 Disclaimer/SCRIPPS G 2/10 [2012] OJ EPO 376 (30 August 2011)�� 292, 305, 307, Disclaimer III/PRINCETON UNIVERSITY G1/16 [2018] EPOR 11, [2018] OJ A70 (18 December 2017).�� 292 Disclaimer III/PRINCETON UNIVERSITY G1/16 [1998] OJ EPO supplementary publication 3 29 (18 December 2017)�� 307 Dispensing of restricted goods/BLUEPOINT T 578/12 (unpublished) (8 June 2017)�� 274 Document scoring/Google T 0817/16, ECLI:EP:BA:2019:T081716.20190110 (unpublished) (10 January 2019)�� 335 Document summary/ARIZAN CORPORATION T 0483/11 (unpublished) (13 October 2015)�� 336 Dolby v MAS Electronic, 4c O 44/18 (7 May 2020), LG Düsseldorf�� 185 Donohue v Armco Inc [2001] UKHL 64, [2002] 1 All ER 749 (13 December 2001)��186, 187 Dory v Sheffield Health Authority [1991] FSR 221 (10 March 1988), ChD (Pat Ct)�� 474–475 Dosage regime/ABBOTT RESPIRATORY G2/08 (Kos Life Science) [2010] EPOR 26, OJ EPO 456 (19 February 2010).��78, 90, 261, 295, 299, 301 Doxycycline 12045 (Pfizer v Pharmon) (10 June 1983), Hoge Raad�� 75 DR v Samsung, 200.216.620/01 (21 April 2020), Gerechtshof Den Haag�� 390 Dr Reddy’s Laboratories (UK) Ltd v Eli Lilly & Co Ltd [2009] EWCA Civ 1362, [2010] RPC 9 (18 December 2009)��288, 291, 303, 387–388

Table of Cases xxxix Dr Reddy’s Laboratories (UK) Ltd v Warner-Lambert Co LLC [2012] EWHC 3715 (Pat), [2013] RPC 31 (20 December 2012), Pat Ct�� 434 Drahtinjektionseinrichtung X ZR 215/00 GRUR 2002 609 (6 February 2002), BGH�� 450 Drehschiebeschalter X ZR 12/80 GRUR 1981 263 (25 November 1980), BGH�� 450 Dreizler v Remeha NJ 1995, 392 (13 January 1995), Hoge Raad, Netherlands�� 33 Dreymoor Fertilisers Overseas Pte Ltd v Eurochem Trading Gmbh [2018] EWHC 2267 (Comm), [2018] 2 Lloyd’s Rep 536 (24 August 2018)�� 535 Drospirenone I (21 March 2013) S2013_001, Swiss Fed Pat Ct��36, 208 Dry granulated product/AJINOMOTO T 1543/12 (unpublished) (19 April 2016)�� 356 Drying process/UNILEVER T 913/01 (unpublished) (11 October 2004)�� 282 DSM v Novozymes C/09/515238 / KG ZA 16-906 (6 January 2017), Rechtbank Den Haag�� 497 Du Pont’s Patent [1982] FSR 303 (18 February 1982), HL��288, 388 Duns Licensing Associates T 0154/04 ECLI:EP:BA:2006:T015404.20061115 (15 November 2006)�� 265 Duphar v Gist-Brocades, Rechtsbank Den Haag [1987] BIE 1988/28, Netherlands�� 8 Duplo v MGI, 19/02734 (26 March 2021), TJ Paris 3.2�� 40 Düsseldorf Higher Regional Court Mitt.dtPA 2021, 25 (14 November 2019)�� 67 Dynea AS v Casco Adhesives AB, case nos T 927-04 and 2479-04 (19 October 2006), Stockholm District Ct�� 146 Dyson Appliances Ltd v Hoover Ltd [2001] EWCA Civ 1440, [2002] RPC 22 (4 October 2001)�� 17, 313, 314, 342 Dynamische Dokumentengenerierung Xa ZB 20/08 GRUR 2010 613 (22 April 2010), BGH�� 251 E Mishan and Sons Inc (t/a Emson) v Hozelock Ltd [2019] EWHC 991 (Pat), [2019] RPC 17 (17 April 2019)��38, 281 E Mishan & Sons, Inc v Hozelock Ltd & Ors [2020] EWCA Civ 871, [2020] RPC 19 (08 July 2020)�� 340, 343, 344 E-Mail via SMS X ZR 58/10 GRUR 2012 261 (22 November 2011), BGH�� 332 Easycare v Bryan Lawrence [1995] FSR 597, [1994] 12 WLUK 143 (12 December 1994)�� 93 ECLI:NL:RBDHA: 2014:16693, C/09/442744/HA ZA 13-546, 17 September 2014, Rechtbank Den Haag�� 219 ECLI:NL:RBDHA:2015:5631, (20 May 2015) preliminary injunction judge Rechtbank Den Haag�� 206 Edwards Lifesciences v Boston Scientific [2018] EWHC 664 (Pat), [2018] FSR 30 (27 March 2018)�� 218 Edwards Lifesciences LLC v Boston Scientific Scimed Inc [2018] EWCA Civ 673, [2018] FSR 29 (28 March 2018)��212, 214 Edwards Lifesciences AG v Cook Biotech Inc [2009] EWHC 1304 (Pat), [2009] FSR 27 (12 June 2009), Pat Ct�� 296 Edwards Lifesciences Nordic AB v Meril Life Sciences Private Ltd and EPS Vascular AB, case nos PMT 17279-20, PMT 17281-20, PMT 9021-21, PMT 9027-21 (17 September 2021), Swedish Patent and Market Ct�� 196 Effektoren der Dipeptidyl Peptidase IV/Prosidion/PROSIDION T 1151/04 (unpublished) (18 March 2008)�� 367 Efomycine als Leistungsforderer/BAYER T 774/89 (unpublished) (2 June 1992)�� 261 EI Du Pont de Nemours and Co v INPI 05/20525 (8 February 2006), Paris CA�� 410

xl Table of Cases Einstein-Bohr end/ZAGYANSKY T 1538/05 (unpublished) (28 August 2006)�� 243 Einteilige Öse X ZR 65/05 GRUR 2010 407 (8 December 2009), BGH�� 329 Electric machine/BOSCH T 1085/92 (unpublished) (10 November 1994)�� 282 Electrical device containing a halogenated dielectric fluid/OCCIDENTAL T 131/87 (unpublished) (7 September 1989)�� 406 Elektrische Anschlussklemme 6 U 4009/19 (12 December 2019), OLG München�� 194 Elektrische Steckverbindung X ZB 15/93 GRUR 95 330 (17 January 1995), BGH�� 273 Electrolux Northern Ltd v Black & Decker [1996] FSR 595��532, 533 Elektrolytkondensator/SIEMENS T 175/97 (14 March 2000).�� 42 Elektronische Funktionseinheit X ZR 4/00 GRUR 2004 133 (14 October 2003), BGH�� 293 Element and energy production device/ZACHARIAH T 541/96 (unpublished) (7 March 2001)�� 239 Element for a solar heat reflector/RIOGLASS T 0523/14 (unpublished) (17 February 2017)�� 285 Eli Lilly v Actavis, case no PMT 2097-15 and PMT 6191-17 (31 January 2018), Swedish Patent and Market Ct��35, 59, 117 Eli Lilly v Fresenius, case no PMT 1248-18 and PMT 1090-19 (11 December 2020), Swedish Patent and Market Ct��35, 59, 117 Eli Lilly v Fresenius, RG 17/10421 (11 September 2020), TJ Paris��40, 41 Eli Lilly v Fresenius RG 17/1042021 (11 September 2020), TJ Paris 3.3��53–54 Eli Lilly v Fresenius, 200.261.833/01, ECLI:NL:GHDHA: 2020:2052 (27 October 2020), Gerechtshof Den Haag��57–58 Eli Lilly v Fresenius, Teva C/09/538525 / KG ZA 17-1159 and C/09/537158 / KG ZA 17-1072 (24 October 2017), Rechtbank Den Haag�� 195 Eli Lilly v Genentech [2020] EWHC 261 (Pat), [2020] RPC 10 (14 February 2020)�� 141 Eli Lilly v Sandoz C/09/526079 / KG ZA 17-129 (1 March 2017), PI judge Rechtbank Den Haag�� 195 Eli Lilly v Sandoz ECLI:NL:RBDHA: 2017:1907, 1 March 2017, Rechtbank Den Haag�� 202 Eli Lilly v Teva Sante (Raloxifene case), 12/07203 (12 March 2014), Paris CA�� 334–335 Eli Lilly v Zentiva RG 19/06927, (7 January 2021), TJ Paris 3.1; confirmed Paris CA, docket No 21/01880 (9 November 2021)�� 53, 193, 201, 228 Eli Lilly & Co v Fresenius Kabi Nederland BV, 200.261.833/01, ECLI:NL:GHDHA:2020:2052�� 34 Eli Lilly and Co v Genentech Inc [2019] EWHC 387 (Pat), [2019] 3 WLUK 15, (1 March 2019), Pat Ct�� 430 Eli Lilly and Co v Genentech Inc [2019] EWHC 388 (Pat), [2019] 3 WLUK 4, (1 March 2019), Pat Ct�� 430 Eli Lilly and Co v Genentech Inc Case C-239/19, Order ECLI:EU:C:2019:687�� 430 Eli Lilly & Co v Human Genome Sciences Inc [2014] EWHC 2404 (Pat), [2015] RPC 8 (18 July 2014), Pat Ct��416, 418 Eli Lilly v Human Genome Sciences (HGS) Case C-493/12 [2014] RPC 21 (12 December 2013), CJEU��417–418, 419, 420, 422, 423, 427, 430 Eli Lilly & Co v Janssen Alzheimer Immunotherapy [2013] EWHC 1737 (Pat), [2014] RPC 1 (25 June 2013), Pat Ct�� 397 Eli Lilly v Ratiopharm, case Ö 2667-02, 20 December 2002, Swedish Sup Ct�� 35 Eli Lilly v Ratiopharm NJA 2002, 660, Swedish Sup Ct�� 41

Table of Cases xli Eli Lilly & Co, Eli Lilly Italia Spa v Fresenius Oncology PLC and Fresenius Kabi Srl 45209/2017 (15 October 2018), Ct of Milan, business division�� 56 Eli Lilly / Fresenius Kabi C/09/537158 / KG ZA 17-1072 (24 October 2017), Rechtbank Den Haag�� 57 Eli Lilly / Fresenius Kabi C/09/541424 / HA ZA 17-1097 (19 June 2019), Rechtbank Den Haag�� 57 Eli Lilly / Teva C/09/538525 / KG ZA 17-1159 (24 October 2017)�� 57 Eli Lilly & Co / Ratiopharm GmbH. 200.069.117/01 (27 September 2011), Gerechtshof Den Haag�� 388, 389–390 Eli Lilly Sweden Aktiebolag v Sandoz A/S, case no PMÖ 4865-18 (4 June 2018 and 20 June 2018), Swedish Pat and Market CA�� 349 Eli Lilly Sweden Aktiebolag v Sandoz A/S, case no PMT 1781-18 and PMT 3127-18 (7 February 2020), Swedish Pat and Market CA�� 349 Emson v Hozelock. See E Mishan and Sons Inc (t/a Emson) v Hozelock Ltd Enantiomer/C T 296/87 [1990] OJ EPO 195 (30 August 1988)��288, 303 Enantiomer/HOECST T 296/87 [1990] OJ EPO 195 (30 August 1988)�� 287 Enhanced Colour Contrast/ General Electric Co T 2530/16 (unpublished) (4 December 2020)�� 334 Entitlement to priority 0577/11 (unpublished) (14 April 2016)�� 296 Entsperrbild 2 Ni 59/11 and 2 Ni 64/11 (4 April 2013), BpatG�� 338 Entsperrbild X ZR 110/13 (16 February 2016), BGH�� 338 Envac AB v DISAB Vacuum Technology AB case no 12-082, Swedish Ct of Patent Appeals�� 43 EPO decisions of 20 January 2020 (EP 18 275 163, EP 18 275 174)�� 441 Ergänzendes Schutzzerfikat 4b O 32/18 GRUR -RS 2018, 47687 (18 December 2018), LG Düsseldorf�� 426 Erich Gasser GmbH v MISAT Srl C-116/02 [2003] ECR I-14693 (9 December 2003), ECJ��504 Ericsson v TMT, docket No 12/14922 (29 November 2013), TGI Paris�� 176 Erythropoietin II, published in sic! 1997, 208, Zurich Com Ct�� 361 Escitalopram GRUR 2010, 123 (9 September 2009), BGH, Germany�� 8 Estimating sales activity/DUNS LICENSING ASSOCIATES 154/04 [2008] OJ EPO 46 (15 November 2006)�� 335 Etablissement Barre v Technique Equipment Medical, SARL 15/23689 (29 September 2017), Paris CA��268, 276 Etablissement D’Hospitalisation, 16-00062 (19 February 2016), Paris CA��268, 276 Etching metal services/SCHMID T 229/85 [1987] OJ EPO 237 (27 October 1986) ��318, 331 Ethinylestradiol and drospirenone for use as a contraceptive/BAYER T 7/07 (unpublished) (7 July 2011)�� 284 Ethypharm SA v/ Merck Sharp & Dohme Corp 16/01225 (28 January 2018), TGI�� 374 Etypharm v Merck Sharp & Dohme Corp, No 18/03876 (29 October 2019), CA Paris��329, 394 Euromarket Designs Inc v Peters [2001] FSR 20, [2000] ETMR 1025 (25 July 2000), ChD.�� 66 European Pallet Association v PHZ C/09/506432 / HA ZA 16-253 (31 August 2016), Rechtbank Den Haag.�� 139 Evalve v Edwards S2019_002 (15 August 2019), Swiss Fed Pat Ct�� 215 Evalve & Abbott v Edwards Life Sciences Ltd [2020] EWHC 513 (Pat), [2020] RPC 13 (12 March 2020)�� 214–215

xlii Table of Cases Evalve & Abbott v Edwards Life Sciences Ltd [2020] EWHC 514 (Pat), [2020] RPC 12 (12 March 2020)�� 214 Evalve v Edwards 2019_002 (15 August 2019), Swiss Fed Pat Ct�� 478 Evalve Inc v Edwards Lifesciences Ltd [2019] EWHC 1158 (Pat), [2020] FSR 4 (3 May 2019), Pat Ct��193, 199 Event Detector/RAYCHEM T 689/90 [1993] OJ EPO 616 (21 January 1992)�� 306 Evysio Medical Devices v Guidant and Abbott, 06/08499 (22 December 2006), TGI Paris, 3.2�� 126 Expression in yeast/ GENENTECH T 0455/91 [1995] OJ EPO 684, [1996] EPOR 85, [1994] 6 WLUK 223 (20 June 1994), European Patent Office (TBA)��10, 332, 334 Ezetimib 2 U 64/18 GRUR -RS 2019, 47853 (15 March 2019), OLG Düsseldorf�� 426 F Hoffmann-La Roche AG v Accord Healthcare OÜ Case C-572/15 ECLI:EU:C:2016:739 (5 October 2016), CJEU�� 431 F v C 11/11185 (13 May 2016), TGI Paris; confirmed by CA Paris, 16/15080 (15 May 2018)�� 443 Fabio Perini v LPC Group PLC [2010] EWCA Civ 525, [2010] 5 WLUK 342 (14 May 2010).�� 119 Fabio Perini v LPC/PCMC [2012] EWHC 1393 (Pat) (4 April 2012).�� 219 Facebook Ireland Ltd v Voxer IP LLC [2021] EWHC 657 (Pat), [2021] FSR 27, [2021] 3 WLUK 424 (19 Mar 2021)�� 27 Facebook Ireland Ltd v Voxer IP LLC [2021] EWHC 1377 (Pat), [2021] 5 WLUK 379 (26 May 2021)�� 38 Factor VIII formulation/BIOVITRUM T 847/07 (unpublished) (13 January 2010)�� 324 Factor-9/JOHNS HOPKINS T 1329/04 [2006] EPOR 8 (28 June 2005)�� 315, 316, 318, 345, 352, 370, 384–385, 386, 395, 398, 404, 407 Fagersta Energetics AB v Roslags Service AB, case no T 317/91, (1993-06-11), Svea CA�� 140 Fahrzeugnavigationssystem X ZR 27/12 (23 April 2013), BGH.�� 246 Fahrzeugscheibe X ZR 49/12 GRUR 2013 712 (16 April 2013), BGH�� 296 Farbversorgungssystem X ZR 139/10 GRUR 2014 647 (11 March 2014), BGH�� 321 Farmitalia Carlo Erba SRL’s SPC Application C -392/97 [1999] ECR I-05553 (16 September 1999), ECJ�� 416 Fast crystallising polyester compositions/ ICI Plc T 0061/85 (unpublished) (30 September 1987)�� 293 Faurecia Sieges D’Automobile SAS v Lear Corp Seating France SAS 12/17582 (8 January 2016), TGI Paris, confirmed by Paris CA16/04223 (6 February 2018)�� 268 Fentanyl-TTS Xa ZR 149/07 GRUR 2011, 129 (18 November 2010), BGH�� 343 Ferag AG v Muller Martini Ltd [2007] EWCA Civ 15, (2007) 151 SJLB 163 (23 January 2007)�� 343 Ferring International Center S.A. v Medac Gesellschaft fur klinische Spezial praparate resp. Gebro Pharma GmbH, joined case nos T 26687-06, T 1370-07 and T 15455-07 (31 March 2011), Stockholm District Ct�� 146 Fettsäuren X ZR 40/12 GRUR 2014 54 (24 September 2013), BGH�� 301 Fettsäurezusammensetzung, Xa ZR 28/08 GRUR 2010 607 (15 April 2010), BGH�� 349 Fibersystem AB v Comex Electronics AB, joined case nos T 11897-08 and T 17839-08 (5 June 2014), Stockholm District Ct�� 146

Table of Cases xliii Fiberweb Geosynthetics Ltd v Geofabrics Ltd (Rev 1) [2021] EWCA Civ 854, [2021] 6 WLUK 134 (11 June 2021)��271, 288 FibroGen Inc v Akebia Therapeutics Inc & Anor and Astellas Pharma Inc v Akebia Therapeutics Inc & Anor [2021] EWCA Civ 1279, [2021] 8 WLUK 161 (24 August 2021)�� 367, 368, 375, 378, 381, 382, 393 Filler mass/ N.I.INDUSTRIES T 560/89 [1992] OJ EPO 725, [1994] EPOR 120, [1991] 4 WLUK 202 (24 April 1991)�� 9 Filmop v D.ME, Docket No 14/18000 (27 September 2016), CA Paris�� 285 Filtervorrichtung 15 U 1/20 GRUR -RR 2021, 337 (25 February 2021), OLG Düsseldorf�� 71 Filterwerk Mann and Hummel (6 March 2002), TGI Paris�� 111 Financial Services Authority v Rourke (unreported) (19 October 2001).�� 156 Fiona Shevill, Ixora Trading Inc, Chequepoint SARL and Chequepoint International Ltd v Presse Alliance SA Case C-68/93 [1995] ECR I-00415 (7 March 1995), ECJ��500, 511 Fiprofil, docket No 18/23261 (9 November 2021), CA Paris��285, 320 Fish & Fish v Sea Shephard [2015] UKSC 10, [2015] 1 AC 1229, [2015] 2 WLR 694 (4 March 2015)�� 119 Fisher & Paykel Healthcare Ltd v Flexicare Medical Ltd & Anor [2020] EWHC 3282 (Pat), [2020] 12 WLUK 100 (8 December 2020)�� 340 Flügelradzähler X ZR 48/03 GRUR 2004 758 (4 May 2004), BGH�� 70, 104, 105, 107 Foil container closing apparatus/EKCO T 517/90 (unpublished) (13 May 1992)�� 277 Foldable plastic bottle/DURING T 809/95 (unpublished) (29 April 1997)��282, 283 Folding Attic Stairs Ltd v Loft Stairs Co Ltd and Michael Heraghty [2009] EWHC 1221 (Pat), [2009] FSR 24 (9 June 2009)��11, 45 Folien Fischer AG v Ritrama SpA Case C-133/11 ECLI:EU:C:2012:664, (25 October 2012), CJEU��502, 506 Food composition / NUTRICIA T 0694/16 (unpublished) (15 May 2019).�� 302 Formsprutarna J-AJ & Co AB v Merx Team AB NJA 2005, s 180, Swedish Sup Ct�� 219 Formstein X ZR 28/85 GRUR 1986, 803 (29 April 1986), BGH��28, 29, 62, 165, 273, 310 Formteil Xa ZR 52/08 GRUR 2010 599 (18 February 2010), BGH�� 359 Forsgren v Osterreichisches Patentamt (C-631/13) EU:C:2015:13, (2015) 143 BMLR 211, (15 January 2015), ECJ (8th Chamber)��413, 414 Fort Dodge Animal Health Ltd v Akzo Nobel NV [1998] FSR 222 (27 October 1997), CA�� 499 Fort Vale v Pelican B9 6289 (18 June 2008), Rechtbank Den Haag�� 164 Fort Vale v Pelican IEF 6298 (18 June 2008), Rechtbank Den Haag�� 497 Fosinopril BGE 124 III 375 (10 July 1998) Swiss Federal Supreme Ct�� 417 Frama v Doc’up, RG 16/16392 (20 December 2018), TGI, 3.1�� 72 French Sup Ct no° 11-8710 (28 September 2012)�� 531 Fresenius v Amgen 19/50489 (14 February 2018) TGI Paris�� 143 Fresenius Kabi v Biogen and intervener Samsung Bioepis, case BS-39398/2018-SHR (20 June 2019) (published as U.2019.3655), Denmark�� 145 Fresenius Kabi a.o v Eli Lilly, case B-2735-17 (20 December 2018), Danish High Ct�� 52 Fresenius Kabi Deutschland GmbH v FUJIFILM Diosynth Biotechnologies Denmark ApS and others, case vs. BS-23061/2020-SHR (3 September 2021), Denmark�� 318

xliv Table of Cases Fresenius Kabi Nederland BV v Eli Lilly & Company 200.228.753/01 (8 May 2018) Gerechtshof Den Haag�� 57 Fresenius v Eli Lilly 200.228.753/01 (8 May 2018), Gerechtshof Den Haag�� 57 Friction reducing additive/MOBIL G 2/88 [1990] OJ EPO 93, 469 (11 December 1989)�� 391 Friction reducing additives/MOBIL IV T 59/87 [1991] OJ EPO 561 (14 August 1990)�� 277 Fuel injector valve/Nissan T 167/84 [1987] OJ EPO 369 (20 January 1987)�� 273 Fuel oils/EXXON T 409/91 [1994] OJ EPO 653 (18 March 1993)�� 355, 360, 406 Fuhrungsdrahtnavigation/BrainLAB T 836/08 (unpublished) (12 May 2011)�� 260 Fujifilm Kyowa Kirin Biologics Co Ltd v Abbvie Biotechnology Ltd (Rev 1) [2016] EWHC 425 (Pat), [2017] RPC 6 (01 March 2016)�� 160 Fujifilm Kyowa Kirin Biologics Co Ltd v Abbvie Biotechnology Ltd [2016] EWHC 2204 (Pat), [2017] RPC 7 (8 September 2016)�� 160 Fujifilm Kyowa Kirin Biologics Co Ltd v Abbvie Biotechnology Ltd [2016] EWHC 3383 (Ch), [2017] RPC 8, [2017] RPC 8 (29 December 2016)�� 160 Fujifilm Kyowa Kirin Biologics Co Ltd v AbbVie Biotechnology Ltd [2017] EWHC 395 (Pat), [2018] RPC 1 (3 March 2017)�� 161 Fujifilm Kyowa Kirin Biologics Co Ltd v Abbvie Biotechnology Ltd [2017] EWCA Civ 1, [2017] RPC 9 (12 January 2017)�� 158, 160, 162, 163 Fullplastverfahren KZR 14/78 GRUR 1980 38 (24 September 1979), BGH�� 138 Füllstoff Xa ZR 18/08 GRUR 2010 47 (10 September 2009), BGH�� 447 Fulvestrant 2 U 27/18 (9 January 2019), OLG Düsseldorf�� 86 Fulvestrant formulation BGE, 144 II 337 (8 May 2018), Swiss Fed Sup Ct�� 361 Fungizide Wirkstoffzusammensetzung 14 W (pat) 44/19 GRUR 2020, 162 (19 September 2019), BpatG��410, 426 Funkuhr II X ZR 53/04 GRUR 2007, 313 (30 January 2007), BGH��65, 111 Furmanite International Ltd, No 94/19819 (17 September 1997), CA Paris�� 268 Furr v Truline (CD) (Building Products) [1985] FSR 553, [1985] 1 WLUK 895 (18 January 1985), ChD (Pat Ct)�� 43 Fusion Peptide Inhibitors/CONJUCHEM (unpublished) T 0433/05 (14 June 2007)�� 398 Galactic v Jungbunzlauer 12/06951 (3 April 2014), TGI Paris�� 143 Gale’s Patent Application [1991] RPC 305 (13 December 1990), CA�� 244 Galicier v ACM Caruelle 03-14167 (14 June 2005), Cass Com�� 454 GAM v PFIZER CORPORATION, no° 05-20.647 (3 April 2007), Cas Com�� 76 Garmin (Europe) Ltd v Koninklijke Philips NV [2019] EWHC 107 (Ch), [2019] 1 WLUK 257 (29 January 2019), Pat Ct�� 8, 24, 246–247 GAT v LuK Case C-4/03 [2006] ECR I-06509 (13 July 2006), ECJ�� 492–493, 494, 495, 496, 497, 498, 500, 501, 503, 507 GD Searle LLC & Janssen v Sandoz 18/60334 (11 January 2019), TGI Paris��193, 424 GD Searle LLC et al v Sandoz A/S, case no PMÖ 12172-18 (21 January 2019), Swedish Patent and Market CA��196, 424 Gedeon Richter plc v Bayer Schering Pharma AG [2011] EWHC 583 (Pat), [2011] Bus LR D153 (17 March 2011)��328, 347 Gegensprechanlage X ZB 3/00 (20 November 2001), BGH�� 379 Geheimverfahren I-2 W 57/08 BeckRS 2009, 9220 (24 September 2008), OLG Düsseldorf�� 541 Gemstar-TV Guide International Inc v Virgin Media Ltd [2009] EWHC 3068 (Ch), [2010] RPC 10, (26 November 2009), Pat Ct.��246, 247

Table of Cases xlv Gene coding for interleukin-2 polypeptide/AJINOMOTO T 128/92 (unpublished) (30 November 1994)�� 282 Genentech v Hoechst and Sanofi-Aventis (C-567/14) ECLI:EU:C:2016:526 (7 July 2016)�� 458 General Hospital Corp and Société Zeltiq Aesthetics Inc v Société Clinipro, 11-18480 (25 May 2013), TGI Paris�� 304 General technical knowledge/BOEING T 195/84 [1986] OJ EPO 121 (10 October 1985)�� 9, 14 General Tire & Rubber Co Ltd v Firestone Tyre & Rubber Co Ltd (No 1) [1972] RPC 457, [1971] FSR 417 (28 July 1971), CA��14, 267, 270 General Tire & Rubber Co Ltd v Firestone Tyre & Rubber Co Ltd [1976] RPC 197 (16 April 1975).�� 218, 222–223 Generics (UK) Ltd v Daiichi Pharmaceutical Co Ltd [2008] EWHC 2413 (Pat), [2009] RPC 4 (15 October 2008)�� 157, 308, 526, 529 Generics (UK) Ltd v Daiichi Pharmaceutical Co Ltd & Anor [2009] EWCA Civ 646, [2009] RPC 23 (02 July 2009)�� 415 Generics (UK) Ltd v H Lundbeck A/S [2006] EWCA Civ 1261, [2006] 8 WLUK 23 (2 August 2006)�� 118 Generics (UK) Ltd v H Lundbeck A/S [2007] EWHC 1040 (Pat), [2007] RPC 32 (4 May 2007)�� 364 Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12, [2009] RPC 13 (25 February 2009)��363, 364, 380, 381, 406 Generics (UK) Ltd v Synaptech Inc Case C-427/09 [2011] ECR I-07099 (28 July 2011), CJEU�� 429 Generics (UK) Ltd (t/a Mylan) v Yeda Research and Development Co Ltd, Teva Pharmaceutical Industries Ltd [2013] EWCA Civ 925, [2014] RPC 4 (29 July 2013).�� 42, 319, 397, 398 Generics (UK) Ltd (t/a Mylan) v Yeda Research & Development Co Ltd [2017] EWHC 2629 (Pat), [2018] RPC 2 (26 October 2017)�� 49, 141, 161, 162 Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Co LLC; sub nom Warner-Lambert Co LLC v Generics (UK) Ltd (t/a Mylan); Actavis Group PTC EHF v Warner-Lambert Co LLC [2015] EWHC 2548 (Pat), [2016] RPC 3 (10 September 2015), Pat Ct�� 17 Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Co LLC [2015] EWHC 3370 (Pat), [2016] RPC 16 (25 November 2015)�� 486 Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Co LLC (pregabalin UK) [2016] EWCA Civ 1006, [2017] RPC 1, (2017) 153 BMLR 28 (13 October 2016)��101, 370, 371, 372, 373, 392, 393, 399, 407 Generics (UK) Ltd (t/a Mylan) v Yeda Research & Development Co Ltd [2012] EWHC 1848 (Pat), [2012] 7 WLUK 308 (11 July 2012)�� 526 Georgetown University v Octrooicentrum Nederland Case C-484/12 ECLI:EU:C:2013:828 (12 December 2013), CJEU�� 424–425, 427 Geotechnics/Meeuwissen 02/1067 (16 April 2003), Rechtbank Den Haag�� 322 Geratherm Medical AG v Gima SpA Tribunal of Milan, 11 November 2015, No 12657�� 51 Gerber Garment Technology Inc v Lectra Systems Ltd [1997] RPC 443 (18 December 1996), CA�� 218

xlvi Table of Cases German Graphics Graphische Maschinen Case C-292/08 [2009] ECR I-8421 (10 September 2009), ECJ�� 491 Geschäftspolitik C-539/03 GRUR 2007 47 (13 July 2006), EuGH�� 498 Gesellschaft fur Antriebstechnik mBH & Co KG (GAT) v Lamellen und Kupplungsbau Beteiligungs KG (LuK), Düsseldorf Regional Ct�� 493 Gilead Biopharmaceuticals Ireland UC v Teva Sweden Aktiebolag, case no PMT 8260-17 (13 July 2017), Swedish Patent and Market Ct��202, 203 Gilead Sciences and others v Biogaran SAS, 18/15928 (19 June 2020), Paris CA�� 422 Gilead Sciences and others v Mylan SAS 17/57112 (5 September 2017), TGI Paris�� 422 Gilead Sciences and others v Mylan SAS, 18/15906 (19 June 2020), Paris CA�� 422 Gilead Biopharmaceuticals Ireland UC v Teva Sweden Aktiebolag, case no PMT 8260-17 (13 July 2017), Swedish Patent and Market Ct�� 202 Gillette Safety Razor Co Ltd v Anglo American Trading Co Ltd (1913) 30 RPC 465, (3 September 1913), HL�� 29, 62, 141, 149, 157–158, 159, 164, 165, 310, 497 Giulini Chemie GmbH v Lambiotte Freres PIBD 1991, 493 III 76 (18 October 1990), Cour de Cassation, France�� 9 Glasfasern II X ZR 30/14 GRUR 2016, 257 (15 December 2015), BGH�� 65 Glaxo Group Ltd v Genentech Inc [2008] EWCA Civ 23, [2008] FSR 18 (31 January 2008)�� 487 Glaxo Group Ltd v Vectura Ltd [2018] EWHC 3414 (Pat), [2018] 12 WLUK 262 (13 December 2018)�� 161 Glaxo Group Ltd’s Patent. See Cipla Ltd v Glaxo Group Ltd GlaxoSmithKline Biologicals SA v Comptroller-General of Patents (GSK) [2013] EWHC 619 (Pat), [2013] RPC 26 (21 March 2013)�� 412, 413, 414 Glaxosmithkline Biologicals SA v Comptroller General of Patents, Designs and Trade Marks Case C-210/13, [2014] RPC 17 (14 November 2013), CJEU�� 413 GlaxoSmithKline UK Ltd (GSK) v Wyeth Holdings LLC [2017] EWHC 91 (Pat), [2017] 1 WLUK 110 (13 January 2017)�� 224–225 Glaxosmithkline UK Ltd v Wyeth Holdings LLC [2016] EWHC 1045 (Ch), [2016] 5 WLUK 275 (12 May 2016), Pat Ct�� 16 Glenmark v Boehringer Ingelheim O2018_008, para 17 (2 February 2021), Swiss Fed Pat Ct�� 15 Glenmark v Boehringer Ingelheim 4A_149/2021 (24 June 2021) Swiss Fed Sup Ct��323, 390 Glide-shoe arrangement for a variable-crown roll/VALMET T 92/92 (unpublished) (21 September 1993)�� 318 GNR-Pharma v Laboratoires Knoll France, docket No 97/62152 (16 January 1998); confirmed by the Cass Com No 98-11.954 (24 October 2000)�� 284 Go Sport v Time Sport International 11-10924 (31 January 2012), Cour de Cassation�� 293 Grimme v Steenvoorden (20 April 2010), Rechtbank Den Haag�� 109 Grimme Landmaschinenfabrik GmbH & Co KG v Scott (t/a Scotts Potato Machinery) [2010] EWCA Civ 1110, [2011] FSR 7, [2011] Bus LR D129 (15 October 2010)��4, 6, 108, 109, 343, 344 Grooved pully/AUBECQ AUXI T 478/91 (unpublished) (2 June 1993)��339, 340

Table of Cases xlvii Groupe Vicard SA v Tonnellerie Ludonnaise SA 10-30907 (2 November 2011), Cour de Cassation��27, 329 Guangdong OPPO Mobile Telecommunications Corp Ltd v Sharp Corporation (2020), Supreme People’s Ct, People’s Republic of China�� 172 Guaranty Trust Co of New York v Hannay & Co [1915] 2 KB 536 (11 March 1915), CA�� 156 GUI layout/SAP T 1741/08 (unpublished) (2 August 2012)�� 245 Gummielastische Masse II X ZR 152/03 GRUR 2005 663 (22 March 2005), BGH�� 452 Gylov v Frese Armatur, case no 78/2002 (15 January 2004) (published in U.2004/1018H), Danish Sup Ct�� 441 H Lundbeck A/S v Norpharma SPA [2011] EWHC 907 (Pat), [2011] RPC 23 (14 April 2011), Pat Ct�� 290 H2O2/EVONIK T 608/12 (unpublished) (21 October 2014)�� 378 Haberman v Jackel International [1999] EWHC Patents 269, [1999] FSR 683 (15 January 1999), Pat Ct�� 331, 340–341 Hair dye composition/KAO T 2017/07 (unpublished) (26 November 2009)�� 308 Hallen & Co v Brabantia (UK) Ltd [1991] RPC 195 (17 October 1990), CA�� 313, 328, 346 Halliburton Energy Services Inc’s Patent Applications [2011] EWHC 2508 (Pat), [2012] RPC 12 (5 October 2011), Pat Ct�� 265 Hamilton v imtmedical BGE 146 III 403 (16 July 2020), Swiss Fed Sup Ct�� 242 Hamilton Medical v imtmedical O2017_007, para 24 (1 November 2019), Swiss Fed Patent Ct�� 8 Hans GOTTHELF v SA ROLANFER RECYCLAGE, 07/00266, (27 October 2009), CA Colmar�� 76 Harnkatheterset I-2 U 126/09 (29 April 2010), OLG Düsseldorf�� 194 Hartwall OY AB v SAS Touraine Emballage Recyclage, Docket no 15/12176, (28 November 2017), Paris CA��27, 154, 285 Haubenstretchautomat X ZR 173/02 GRUR 2007 679 (9 January 2007), BGH�� 108 Hearing aid/BOSCH T 109/82, [1984] OJ EPO 1984, 473 (15 May 1984)�� 339 Heated fuel line/PACCAR T 213/87 (unpublished) (8 July 1990)�� 334 Heating apparatus/ THORN EMI T 110/92 (unpublished) (12 October 1994)�� 340 Hedegaard v Hardi International, case no 38/2012 (19 November 2013) (U.2014/488H), Danish Sup Ct�� 21 Heizpreßplatte I ZR 34/57 GRUR 1959 178 (17 October 1958), BGH��268, 279 Heliumeinspeisung X ZR 9/89 GRUR 1992, 305 (19 November 1991), BGH�� 78 Hematopoietic receptor/ZYMOGENETICS T 898/05 (unpublished) (7 July 2006)�� 238, 239, 395 Henderson v All Around the World Recordings Ltd [2014] EWHC 3087 (IPEC), [2014] 10 WLUK 97 (3 October 2014)�� 222 Henkel v Diversey [2001] BIE 2002/37, Rechtsbank Den Haag, Netherlands�� 8 Henkel/Diversey II BIE 2004, 8 (6 March 2002), Rechtbank Den Haag�� 109 Herbicides/ICI T 206/83 [1987] OJ EPO 5 26 March 1986�� 355 HEVC Advance v Xiaomi, 4c O 73/20 (29 June 2021), LG Düsseldorf�� 188 Hewlett-Packard v Digital Revolution 200.185.688/01 (23 May 2017), Gerichtshof Den Haag�� 139 Hewlett Packard GmbH v Agilent Technologies Deutschland GmbH 08/00882 (27 January 2010) Paris CA��39–40 Hickman v Andrews [1983] RPC 147 (13 December 1977), CA�� 158

xlviii Table of Cases High density absorbent structures/PROCTOR & GAMBLE T 1054/92 (unpublished) (20 June 1996)�� 283 HIGH DRUG LOAD TABLET/Novartis AG, Novartis Pharma GmbH T 0031/18 (unpublished) (26 November 2019)�� 398 Highgrade Traders Ltd, Re [1984] BCLC 151 (1 January 1984), CA�� 543 HILTI 00-11857 (4 June 2002), Cass Com�� 359 HIV-Medikament GRUR-RR 2013, 241 (20 September 2012), OLG Düsseldorf��65, 68 Hoechst Celanese Corp v BP Chemicals Ltd [1997] EWHC 370 (Pat), [1997] FSR 547 (6 February 1997), Pat Ct�� 333 Hoechst Marion Roussel v X 98-11.900 (21 November 2000), Cass Com�� 449 Hogan Lovells International LLP v Bayer CropScience AG C-229/09 [2010] ECR I-11335 (11 November 2010), CJEU�� 429 Honeywell Ltd v Appliance Components Ltd and Mayne Pty Ltd, Unreported, Patents Ct, February 1996��532, 533 Horne Engineering Co Ltd v Reliance Water Controls Ltd [2000] FSR 90 (10 June 1999)�� 9 Hospira UK Ltd v Cubist Pharmaceuticals LLC [2016] EWHC 1285 (Pat), [2017] RPC 10 (10 June 2016)�� 292 Hospira UK Ltd v Genentech Inc [2014] EWHC 1094 (Pat), [2014] 4 WLUK 439 (10 April 2014), Pat Ct��293, 294, 297, 384, 396 Hospira UK Ltd v Genentech Inc [2014] EWHC 3857 (Pat), [2014] 11 WLUK 647 (21 November 2014)�� 44 Hospira UK Ltd v Genentech Inc [2015] EWHC 1796 (Pat), [2016] RPC 1 (24 June 2015)�� 278, 284–285 Hot strip or heavy plate/THYSSEN STAHL T 153/88 (unpublished) (9 January 1991)�� 279 HP / Digital Revolution ECLI:NL:HR:2019:650 (19 April 2019), Hoge Raad�� 457 HTC Corp v Gemalto SA [2013] EWHC 1876, [2014] RPC 9 (10 July 2013), Pat Ct�� 286, 296, 529 HTC Corp v Nokia Corp [2013] EWCA Civ 1759, [2014] RPC 31 (12 December 2013).�� 212 HTC Corp v Nokia Corp [2013] EWHC 3247 (Pat), [2014] RPC 19 (30 October 2013), Pat Ct�� 138 HTC Corp v Nokia Corp [2013] EWHC 3778 (Pat), [2014] RPC 30 (3 December 2013), Pat Ct��210, 211 HTC Corp v Yozmot 33 Ltd [2010] EWHC 786 (Pat), [2010] 4 WLUK 254 (20 April 2010), Pat Ct�� 247 HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451, [2013] RPC 30 (3 May 2013)�� 249–250 Huawei Technologies Co Ltd v ZTE Corp ZTE Deutschland GmbH Case C-170/13 ECLI:EU:C:2015:477, [2015] Bus LR 1261, [2015] 5 CMLR 14, [2016] RPC 4 (16 July 2015), CJEU�� 141, 142, 168, 169, 170–171, 172, 173, 174, 176, 177, 178, 179, 189, 190 Human Genome Sciences Inc v Eli Lilly & Co [2011] UKSC 51, [2012] RPC 6 (2 November 2011)��240, 395 Human papillomavirus/THE UNIVERSITY OF ROCHESTER T 0843/03 (unpublished) (25 October 2004)�� 293

Table of Cases xlix Hupkens v Van Ginneken NJ 1995 136 (27 May 1994), Hoge Raad�� 450 Hutchison / Gomma Barre Thomas (10 March 2009), TGI Paris�� 340 Hybrid plants/LUBRIZOL T 320/87 [1990] OJ EPO 71 (10 November 1988)�� 257 Hydrofinishing/EXXON T 1014/92 (unpublished) (10 January 1995)�� 339 Hydrogen-absorbing composition/PRYSMIAN T 1464/05 (unpublished) (14 May 2009)��9, 317 Hydropyridin X ZB 4/83 GRUR 1983 729 (20 September 1983), BGH�� 299 Hydroxysubstituierte Azetidinone II 2 U 82/18 GRUR -RS 2019, 47852 (15 March 2019), OLG Düsseldorf�� 426–427 Ian Alexander Shanks v Unilever Plc [2014] EWHC 1647 (Pat), [2014] RPC 29 (23 May 2014), Pat Ct�� 447 Ical Spa, Italvideo International Srl and Cardmania Multimedia Srl vs Rovi Guides Inc, United Video Properties Inc (July 2015), Ct of Milan�� 179 Icescape Ltd v Ice-World International BV [2018] EWCA Civ 2219, [2019] FSR 5 (10 October 2018)��23, 24, 25, 26, 39, 63 ICI v Medicopharma 14795 NJ 1993/81 (18 December 1992), Hoge Raad�� 128 ICI/Medicopharma 14795 NJ 1993 735 (18 December 1992), Hoge Raad�� 128 ICI Plc v Montedison [1995] RPC 449, [1995] 3 WLUK 75 (7 March 1995), CA�� 47 ICOS v Teva, Sandoz, Mylan C-09-543070-KG ZA 17-1462 (5 December 2017), PI judge Rechtbank Den Haag�� 195 ICOS and Lilly v Sandoz S2019_006 (21 March 2019), Swiss Federal Patent Ct�� 198 ICOS and Lilly v Sandoz S2019_007 (1 October 2019), Swiss Federal Patent Ct�� 91, 350–351 Icos Corporation et al v Teva Sweden Aktiebolag, case no T 10911-15 (5 February 2016), Stockholm District Ct�� 203 Idenix Pharmaceuticals Inc v Gilead Sciences Inc [2016] EWCA Civ 1089, [2016] 11 WLUK 200 (8 November 2016)��358, 375–376, 386 IG Farbenindustrie’s Patents (1930) 47 RPC 289 (2 July 1930), HL��288, 388 Illumina Cambridge Ltd v Latvia MGI Tech SIA, case no PMT 401-20 (2 October 2020), Swedish Patent and Market Ct; upheld by the Patent and Market CA, Illumina Cambridge Ltd v Latvia MGI Tech SIA, case no PMO 11561-20 (21 December 2020).�� 196, 197, 473 Illumina Cambridge Ltd v Latvia MGI Tech SIA & Ors [2021] EWHC 57 (Pat), [2021] 1 WLUK 158 (20 January 2021).��8, 11, 12, 13, 14, 314, 363 Illumina Cambridge Ltd v Latvia MGI Tech SIA & Ors [2021] EWCA Civ 1924, [2021] 12 WLUK 235 (17 December 2021)�� 12 Illumina Inc v Premaitha Health Plc [2017] EWHC 2930 (Pat), [2017] 11 WLUK 484 (21 November 2017), Pat Ct�� 66, 111, 243, 249 Image display device X ZR 41/11 GRUR 2014 251 (15 October 2013), BGH�� 283 Image rotating system having an arbitrary angle/MITSUBISHI T 190/94 (unpublished) (26 October 1995)�� 248 Immune-compromised patient/GLAXOSMITHKLINE T 1118/12 (unpublished) (1 March 2016)�� 277 Impact detection apparatus/BOARD OF TRUSTEES OPERATING MICHIGAN STATE UNIVERSITY T 955/90 (unpublished) (21 November 1991)�� 9 Impag v Hasbro NJ 2001, 602 (29 June 200), Hoge Raad�� 195

l Table of Cases Implant for ligament reconstruction/MAYR (T 1117/14) (unpublished) (29 September 2015)�� 7 Improved gasket of elastomer material/GIAT T 1008/96 (unpublished) (25 June 2003)�� 296 Improved process for preparing polyarylates/AMOCO CORPORATION T 424/86 (unpublished) (11 August 1988)�� 274 Improver Corp v Remington Consumer Products Ltd [1990] FSR 181 (16 May 1989), Pat Ct�� 62 InCoax Networks Europe AB v Quicom AB (27 October 2011) MD 2009:26, MD 2009:27, MD 2011:25�� 97 Increasing neurogenesis/NEWRON T 0433/14, ECLI:EP:BA:2018:T043314.20180529 (29 May 2018)�� 302 Incyte Corp v Szellemi Tulajdon Nemzeti Hivatala Case C-492/16 ECLI:EU:C:2017:995 (20 December 2017), CJEU�� 433 Inductive Heating Device BGE 138 III 111 (23 December 2011), Swiss Fed Sup Ct�� 323 Industriale Chimica v Bayer (Court of Cassation, 2 December 2016, No 24658), Italy�� 32 Industrias Alimentarias de Navarra, SA v Mivisa Envases, SA 263/2017 (3 May 2017), Spanish Sup Ct�� 110 INFINEUM G1/15 [2017] EPOR 14, [2017] OJ EPO Supp Publ 44 (29 November 2016)��295, 296 Influenza vaccines/ABBOTT BIOLOGICALS T 967/09 (unpublished) (4 November 2014)��10, 355 Information management/NEC T 1054/05 (unpublished) (28 May 2008)�� 339 Inhale Therapeutic Systems v Quadrant Healthcare [2002] RPC 21, (2001) 24(11) IPD 24075, ChD (Pat Ct) (20 June 2001)�� 42 Inkrustierungsinhibitoren X ZR 40/95 GRUR 00 591 (7 December 1999), BGH�� 290 Insectiside Compositions T 0116/18 ECLI:EP:BA:2021:T011618.20211011 (11 October 2021)��398, 404 Inspection machine/KRONES T 779/02 (unpublished) (24 November 2004)�� 342 Institut Pasteur v Chiron Healthcare et Novartis, 05/11023 (7 February 2007), TGI Paris; confirmed by CA Paris, 4A, 07/08437 (4 March 2009)�� 105 Institut Pasteur v Chiron Healthcare S 09-15668 (23 November 2010), Cour de Cassation�� 28 Institut Pasteur v Siemens, 08/08679 (28 May 2010), TGI Paris��40, 105 Insulet Corp v Roche Diabetes Care Ltd [2021] EWHC 1933 (Pat), [2021] 7 WLUK 117 (9 July 2021)�� 270 InterDigital v Xiaomi, 7 O 14276/20 (25 February 2021), LG München�� 188 InterDigital Technology Corp v Xiaomi Corp, Case No IA 8772/2020 in CS(CO MM) 295/2020 (9 October 2020), New Delhi High Ct�� 188 Interdigital Technology Corp & Ors v Lenovo Group Ltd & Ors [2021] EWHC 89 (Pat), [2021] 1 WLUK 446 (19 January 2021), Pat Ct�� 180, 184–185 InterDigital Technology Corp et al v Lenovo Group Ltd et al [2021] EWHC 3401 (Pat), [2021] 12 WLUK 225 (16 December 2021), Pat Ct.�� 175 Interlemon v Amphenol Socapex 02–03385 (30 May 2003), TGI Paris�� 126 Interleukin 1/IMMUNEX CORPORATION T 767/95 (unpublished) (5 September 2000)�� 287 Internal registration of gas/air/CAMTECH T 5/04 (unpublished) (17 January 2006)�� 260 International Flavors & Fragrances [1984] OJ EPO 309�� 44 International Stem Cell Corp v Comptroller General of Patents [2013] EWHC 807 (Ch), [2014] RPC 2 (17 April 2013), Pat Ct�� 256–257

Table of Cases li International Stem Cell Corp v Comptroller General of Patents, Designs and Trade Marks Case C-364/13, [2015] RPC 19 (18 December 2014), CJEU�� 256 Internet citations/KONAMI T 1134/06 (unpublished) (16 January 2007)�� 286 Ion chamber/SCANDITRONIX T 56/87 [1990] OJ EPO 188 (20 September 1988)�� 274 Ionenanalyse, GRUR 1988, 896, BGH�� 28 Iontophoretic delivery device /ALZA CORPORATION T 26/98 (unpublished) (30 April 2002)�� 9 IP Bridge v Huawei, 7 O 36/21 (24 June 2021), LG München�� 188 IPCom v Lenovo, docket No° 19/59311 (08 November 2019), TGI Paris�� 189 IPCom v Lenovo, docket No° 19/21426 (03 March 2020), CA Paris�� 189 IPCom v Lenovo, docket No 19/60318 (20 January 2020), TGI Paris�� 176 IPCOM v Lenovo and Motorola (20 January 2020), TGI Paris�� 193 IPCOM v XIAOMI (20 January 2020), TGI Paris.�� 193 IPCom GmbH & Co KG v HTC Europe Co Ltd [2013] EWHC 52 (Pat), [2013] 1 WLUK 436�� 539 IPCom GmbH & Co KG v HTC Europe Co Ltd [2013] EWHC 2880 (Ch), [2013] 9 WLUK 588�� 539 IPCOM GmbH & Co KG v HTC Europe Co Ltd [2020] EWHC 2941 (Pat), [2021] FSR 12 (4 November 2020)�� 174 IPCom GmbH & Co KG v HTC Europe Co Ltd [2013] EWCA Civ 1496, [2014] RPC 12�� 487 IPCom GmbH & Co Kg v Lenovo Technology (UK) Ltd & Motorola Mobility UK Ltd [2019] EWHC 3030 (Pat), [2020] FSR 20 (8 November 2019)��156, 188 IPCOM GmbH & Co Kg v Vodafone Group Plc [2020] EWHC 132 (Pat), [2020] RPC 6 (28 January 2020)�� 475 IPCOM GmbH & Co Kg v Vodafone Group Plc [2021] EWCA Civ 205, [2021] Bus LR 813 (19 February 2021)�� 73, 140, 156, 475 Ipcom GmbH and Co KG v Xiaomi Technology UK Ltd [2019] EWHC 3074 (Pat), [2019] 11 WLUK 169 (12 November 2019)�� 193 IPSEN/Pancreatic cells T 0578/06 (unpublished, 29 June 20 11)�� 402 Isentress 3 LiQ 1/16 GRUR 2017 373 (Merck v Shionogi case) (31 August 2016), BpatG�� 470 Italian Corte Suprema di Cassazione No 5406 (12 June 1996)�� 110 Italian Corte Suprema di Cassazione No 22495 (16 October 2006)�� 111 IV v Huawei, docket No 17/13837 (16 January 2020), TJ Paris�� 177 JALON/Luminescent Security Fibres T 422/93 [1997] OJ EPO 24, [1999] EPOR 486, [1995] 9 WLUK 134 (21 September 1995) European Patent Office (Technical Board of Appeal)�� 12 James Duncan Kelly, Kwok Wai Chiu v GE Healthcare Ltd [2009] EWHC 181 (Pat), [2009] RPC 12 (11 February 2009), Pat Ct�� 447 Janssen v Sandoz, docket No 18/60334 (11 January 2019), TGI Paris�� 228 JC Bamford Excavators Ltd v Manitou UK Ltd [2019] EWHC 3071 (Pat), [2020] FSR 21 (18 November 2019)�� 515 JC Bamford Excavators Ltd v Manitou BF, docket No 17/06462 (31 January 2019), TGI Paris, Order of the case management judge�� 193 Jean-Paul BIBERIAN v CEA, 15088/94, (22 November 1996), TGI Paris, 3.2�� 76 Jellification/EXXON T 119/82 [1984] OJ EPO 217 (12 December 1983)�� 342 Jørn Hansson v Jungpflanzen Grünewald GmbH Case C-481/14 ECLI:EU:C:2016:419 (9 June 2016), CJEU.��221, 222

lii Table of Cases JP Morgan Chase Bank NA v Berliner Verkehrbetriebe (BVG) Anstalt des Őfftenlichen Rechts [2010] EWCA Civ 390, [2012] QB 176 (28 April 2010)�� 499 Jushi Group Co Ltd v OCV Intellectual Capital LLC [2018] EWCA Civ 1416, [2019] RPC 1 (19 June 2018)��49, 291 Kaffee-Pads 4b O 108/03 BeckRS 2010, 14932 (26 February 2004), LG Düsseldorf�� 107 Kaufler c Armor inox 05/14964 (20 September 2006), TGI Paris,�� 143 KCI Licensing Inc v Smith & Nephew Plc [2010] EWHC 1487 (Pat), [2010] FSR 31 (23 June 2010) Pat Ct��16, 297 KCI Licensing Inc v Smith & Nephew Plc [2010] EWCA Civ 1260, [2011] FSR 8 (18 November 2010)�� 109 Kettenradanordnung II X ZR 56/08 GRUR 2010, 314 (22 December 2009), BGH��523, 524 Kindernahmaschinen I ZR 39/61 GRUR 1963, 255 (5 November 1962), BGH�� 96 Kirin-Amgen v TKT (No 3) (2001) [2005] FSR 41 (13 September 2001), Patents Ct�� 214 Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2002] EWCA Civ 1096, [2002] RPC 31�� 44 Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46, [2005] RPC 9 (21 October 2004)��21, 22, 23, 49, 375, 378, 406 Klammernahtgerat Xa ZR 126/07 GRUR 2010 916 (13 July 2010), BGH�� 359 Kleiderbügel X ZR 56/93 GRUR 1995 338 (20 December 1994), BGH��228, 456 Klinische Versuche (Clinical Trials) I (X ZR 99/92) [1997] RPC 623�� 124 Klinische Versuche I X ZR 99/92 GRUR 1996 109 (11 July 1995), BGH�� 127, 129, 151 Klinische Versuche II X ZR 68/94 (17 April 1997), BGH�� 127, 129, 151 Kniegelenk-Endoprothese X ZR 121/97 BeckRS 2001, 1742 (12 December 2000), BGH�� 343 Kombinationsimpfstoff 14 W (pat) 10/16 GRUR 2018, 719 (23 January 2018), BPatG�� 430 Kommunikationsrouter X ZB 19/12 NJW-RR 2015, 494 (26 August 2014), BGH��530, 531 Koninklijke KPN v Ingenico Group, 14/11998 (14 April 2016), TGI Paris�� 105 Koninklijke Philips NV v Asustek Computer Inorporation & Ors [2020] EWHC 29 (Ch), [2020] RPC 1 (17 January 2020), Pat Ct�� 174 Koninklijke Philips NV v Xiaomi Inc, Xiaomi Technology (UK) Ltd, Xiaomi Communications Co Ltd, Xiaomi Corp, Xiaomi HK Ltd [2021] EWHC 1124 (Pat), [2021] 4 WLUK 389 (25 April 2021)�� 187 KP1 v Deltisol 09/01124 (17 March 2010), TGI Paris 3.2�� 108 Kraft pulp preparation/METSO T 410/99 (unpublished) (20 January 2003)�� 274 Kranarm X ZR 132/18 GRUR 2021, 574 (17 November 2020), BGH�� 523 Kunststoffbugel X ZR 169/04 GRUR 2006, 927 (16 May 2006), BGH�� 67 Kunststoffrohrteil X ZR 43/01 GRUR 2002 511 (12 March 2002), BGH�� 29, 50–51 Kupplung fur optische Gerate X ZR 179/02 (16 September 2003), BGH�� 67 Kwikbolt Ltd v Airbus Operations Ltd [2021] EWHC 732 (IPEC), [2021] 3 WLUK 426 (25 March 2021)�� 24 L (A Minor) (Police Investigation: Privilege), Re [1997] AC 16, [1996] 2 WLR 395 (21 March 1996), HL�� 544 L’Oreal Société Anonyme v Rn Ventures Ltd [2018] EWHC 173 (Pat), [2018] FSR 20 (5 February 2018).�� 39 L v Air Industrie Systemes 96/11140 (11 March 2003), TGI Paris�� 449 Laboratoires Negma v Biogaran SAS, docket No 10/07477 (30 June 2010) confirmed by Cass Com No 10-24.786 (29 November 2011), CA Paris�� 287

Table of Cases liii Lacroix Duarib SA v Kwikform (UK) Ltd [1998] FSR 493, (1998) 21(3) IPD 21029.��72, 73 Lantana v Comptroller General of Patents [2013] EWHC 2673 (Pat), [2013] Info TLR 231 (4 September 2013), Pat Ct; [2014] EWCA Civ 1463, [2015] RPC 16 (13 November 2014), CA�� 250 Large-scale vehicle for passenger transport/SIEMENS T 1410/14 (unpublished) (14 October 2015)�� 280 Laufkranz X ZR 45/05 GRUR 2006 837 (3 May 2006), BGH�� 70 Lely/Delaval C06/054HR (7 September 2007) Hoge Raad, Netherlands�� 33 Lenovo (Singapore) PTE Ltd v Comptroller General of Patents [2020] EWHC 1706 (Pat), [2020] RPC 18 (09 July 2020)�� 250 Lenova Global Technology Belgium v Enterprise Commune EuropaHPC Case T 717/20�� 490 Leo Pharma v Sandoz 13/03763 (3 October 2014), Hoge Raad�� 322 Leo Pharma v Sandoz, 200.195.459/01 (7 November 2017), Gerechtshof Den Haag�� 390 LG Düsseldorf 4a O 14/06 BeckRS 2011, 25649 (31 January 2006)�� 65 LG Düsseldorf 4b O 39/16 BeckRS 2017, 151515 (5 October 2017).�� 9 LG Düsseldorf 4b O 130/08 BeckRS 2009, 10949 (19 June 2008)�� 536 LG Hamburg 327 O 479/16 (26 April 2018)�� 136 LG Mannheim NJOZ 2009, 1458 ‘Unterlassungsanspruche einer Patentverwertungsgesellschaft’�� 211 LG München 21 O 16782/20 (19 January 2021)�� 194 LG Philips LCD Co Ltd v Tatung (UK) Ltd [2006] EWCA Civ 1774, [2007] RPC 21 (20 December 2006)�� 308 LIFFE Administration and Management v Pavel Pinkava [2007] EWCA Civ 217, [2007] Bus LR 1369, [2007] 4 All ER 981, [2007] RPC 30�� 444 Lighting device and lighting method/CREE T 0378/12 (unpublished) (8 December 2016)��290 Lighting device/VDO ADOLF SCHINDLING T 324/94 (unpublished) (7 May 1996)�� 334 Lilly France v Sanofi, 14/12274 (7 October 2014), Paris, 3.1., ord. ref. Retr�� 131 Limiting feature G1/93 [1994] OJ EPO 541 (2 February 1994).��305, 308 Linco v Meijn (17 November 2010), Rechtbank Den Haag�� 164 Lincoln v Interlas NJ 1992/404 (24 November 1989), Hoge Raad�� 496–497 Liquid hand dishwashing detergent composition T 1621/16 (unpublished) (14 October 2019)�� 306 Liquid supplying system/CANON T 1811/13 (unpublished) (8 November 2016)�� 378 Liqwd Inc v L’Oreal (UK) Ltd [2018] EWHC 1394 (Pat), [2018] 6 WLUK 165 (11 June 2018), Pat Ct.��23, 273, 280, 282, 283 Looijengoed v Dronrijp BIE 2010 19 (20 August 2010), Netherlands Patent Office.�� 251 L’Oreal SA v eBay International AG Case C-324/09 [2011] ECR I-6011 (12 July 2011), CJEU��210, 235 Low-emission emulsion paints/CLARIANT T 0231/97 (unpublished) (21 March 2000)�� 345 Lubrizol Corp v Esso Petroleum Co Ltd [1992] RPC 281 (1 November 1991), Pat Ct�� 142 Lubrizol Corp v Esso Petroleum Co Ltd [1997] RPC 195 (13 November 1996), Pat Ct�� 142–143 Lubrizol Corp v Esso Petroleum Co Ltd [1998] RPC 727 (30 April 1998), CA��142, 465 Lucasfilm Ltd v Ainsworth [2011] UKSC 39, [2011] FSR 41 (27 July 2011), SC�� 504

liv Table of Cases Lufthansa Technik AG v Astronics Advanced Electronic Systems [2020] EWHC 1968 (Pat), [2021] RPC 6 (22 July 2020)�� 276 Luftheizgerät X ZR 176/98 GRUR 2001 228 (10 October 2000), BGH��107, 108 Luminescent security fibres/JALON 422/93 [1997] OJ EPO 25 (21 September 1995)�� 10 Lundbeck v Tiefenbacher 12/00888 (7 January 2013), Hoge Raad�� 322 Lundbeck SA/Sandoz BV 424154 – KG ZA 12-787 (14 August 2012), Rechtbank Den Haag�� 364 Malerbürsten I 33/41 GRUR 1941, 465 (26 August 1941), RG�� 344 Manoir Industries v Nexter Systems SA 10/10211 (12 October 2012), Paris CA�� 447 Marek’s Disease Virus Vaccine/AMERICAN HOME PRODUCTS CORPORATION T 1137/97 (unpublished) (14 October 2002)�� 279 Marker/BEATTIE 603/89 603/89 [1992] OJ EPO 230 (3 July 1990).�� 244 Masri v Consolidated Contractors International Co SAL [2008] EWCA Civ 625, [2009] QB 503�� 187 Mass selective ejection/FINNIGAN T 677/91 (unpublished) (3 November 1992)�� 277 Massachusetts Institute of Technology (MIT) Case C-431/04 [2006] ECR I-4089 (4 May 2006), ECJ�� 411, 412, 413 May & Baker Ltd v Boots Pure Drug Co Ltd (1950) 67 RPC 23, [1951] WN 96 (10 Febryary 1950), HL�� 381 Mayne Pharma Plc v Debiopharm SA & Anor [2006] EWHC 164 (Pat), [2006] FSR 37.�� 532, 534, 544 McNeil AB v Niconovum AB, case no O 9316-09 (16 Mars 2010), Sve CA�� 197 Meaning of terms used in patent documents/NGK INSULATORS T 1321/04 (unpublished) (28 February 2005)��45, 274 Means for regulating plant growth/BAYER G 6/88 [1990] OJ EPO 114 (11 December 1989)�� 391 Medeva BV’s SPC Applications; sub nom Medeva BV v Comptroller General of Patents, Designs and Trade Marks v Case C-322/10 [2011] ECR I-12051, [2012] RPC 25 (24 November 2011), CJEU�� 415–416, 417, 418, 427, 438 Medimmune Ltd v Novartis Pharmaceuticals UK Ltd [2011] EWHC 1669 (Pat), [2011] 7 WLUK 92 (05 July 2011)��75, 528, 529 Medinol v Abbott 13/00522 (4 April 2014)�� 33 Medtronic v Teletronic, docket No 86-014412 (26 October 1988), CA Paris�� 284 Mehrfachkleiderbugel 2 U 56/92 GRUR 1993, 818 (4 June 1992), OLG Düsseldorf�� 537 Mehrträger-Modulationssystem 2 U 33/18 GRUR -RS 2020, 20223 (20 July 2020), OLG Düsseldorf�� 538 Meijn Food Processing Technology v Tieleman Food Equipment et al KG RK 08-0517 (1 April 2008), Rechtbank Den Haag�� 195 Melbye Skandinavia Sverige AB v Comrod Utility Systems AS, case no PMO 9049-20 (1 September 2020), Swedish Patent and Market CA�� 98 Memory device/NATIONAL INSTITUTE OF ADVANCED INDUSTRIAL SCIENCE AND TECHNOLOGY T 2001/12 (unpublished) (29 January 2015)�� 355 Menashe Business Mercantile Ltd v William Hill Organization Ltd [2002] EWCA Civ 1702, [2003] RPC 31 (28 November 2002)��66, 111 Mentor Corp v Hollister Inc (No 2) [1993] RPC 7 (30 July 1992)��271, 368 Mepha v Gilead, O2017_001 (3 October 2017), Swiss Fed Pat Ct�� 417 Mepha v Gilead 4A_576/2017, (11 June 2018) Swiss Fed Sup Ct�� 417

Table of Cases lv Merck v EG Labo and Merck v Sandoz, docket Nos 19/50245 and 19/50247 (8 February 2019), TGI Paris�� 228 Merck v Mepha – Alendronate BGE 137 III 170 (2011) Swiss Federal Sup Ct�� 90 Merck v Ratiofarm (13 February 2008), Rechtbank Den Haag�� 158 Merck v Shionogi. See Isentress 3 LiQ (BPatG); Raltegravir (BGH) Merck v Stephar Case 187/80 [1981] ECR 2063, [1981] 3 CMLR 463, (14 July 1981), ECJ�� 150 Merck & Co v Primecrown Ltd Joined Cases C-267/95 and C-268/95 [1997] FSR 237, (5 December 1996), ECJ��137, 149 Merck & Co Inc v Generics (UK) Ltd [2003] EWHC 2842 (Pat), [2004] RPC 31 (27 November 2003).�� 47 Merck and MSD v Sandoz docket No 19-03820 (14 February 2020), CA Paris�� 193 Merck Canada Inc v Accord Healthcare Ltd and Others Case C-555/13 ECLI:EU:C:2014:92 (13 February 2014)�� 431 Merck Canada Inc v Sigma Pharmaceuticals plc (No 2) [2013] EWPCC 21, [2013] RPC 2 (3 May 2012), Pat Cty Ct; upheld [2013] EWCA Civ 326, [2013] RPC 35 (18 April 2013)��216, 234 Merck Sharp & Dohme Corp v Deutsches Patent und Markenamt Case C-125/10 [2011] ECR I-12987 (8 December 2011), CJEU�� 431 Merck Sharp & Dohme Corp (‘MSD’) v Comptroller-General of Patents, Designs and Trade Marks Case C-567/16 [2018] RPC 9 (7 December 2017), CJEU�� 432 Merck Sharp & Dohme Corp v Teva Pharma 15/04934 (‘Ribavirin case’) (3 November 2017), Hoge Raad�� 104, 118, 122 Merk, Sharpe & Dohme Aktiebolag et al v Teva Sweden AB, case no O 1708-06 (13 October 2006), Svea CA�� 197 Merck Sharp & Dome Sweden Aktiebolag v Teva Sweden Aktiebolag, case no T 1666-04 et al (11 June 2010)��68, 203 Merk Sharp & Dohme Corp. v Paranova Lakemedel Aktiebolag, case no T 2694-14 (18 June 2015), Stockholm Dist CT�� 203 Merk Sharp & Dohme Corp v Paranova Lakemedel AB, case no T 2694-14 (3 July 2014), Stockholm Dist Ct�� 196 Merck Sharp Dohme Corp v Teva Pharma BV [2012] EWHC 627 (Pat), [2012] FSR 24 (15 March 2012)�� 68–69, 200, 209 Merck Sharp & Dohme Ltd v Ono Pharmaceutical Co Ltd; Bristol Myers Squibb Co v Merck & Co Inc [2015] EWHC 2973 (Pat), [2016] RPC 10 (22 October 2015), Pat Ct��14, 278, 396 Merck Sharp And Dohme Ltd v Shionogi & Co Ltd [2016] EWHC 2989 (Pat), [2016] 11 WLUK 667 (25 November 2016)�� 386 Merck/Teva 10/23603 (30 January 2015), Paris CA�� 359 Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd [1995] UKHL 14, [1996] RPC 76, (26 October 1995), HL�� 3, 38, 45, 62, 271, 280, 303, 309, 310 Messier Dowty Ltd v Sabena SA [2000] EWCA Civ 48, [2000] 1 WLR 2040, [2000] 1 All ER 275��152, 156 Metal-containing transaction card and method of making the same/AMERICAN EXPRESS TRAVEL RELATED SERVICES COMPANY INC T 519/12[2017] EPOR 29, [2017] 3 WLUK 443, European Patent Office (TBA)�� 14 Metal refining/BASF T 24/81 [1983] OJ EPO 133 (13 October 1982)��324, 342

lvi Table of Cases Meter-Tech LLC v British Gas Trading Ltd [2016] EWHC 2278 (Pat), [2016] 9 WLUK 306 (16 September 2016)�� 124 Method and apparatus for a mail processing system T 0986/96 (unpublished) (10 August 2000)�� 8 Method and apparatus for increasing the service life of aircraft multiple disc brakes/DUNLOP T 95/97 (unpublished) (18 March 1999)�� 277 Method for creating dictation macros/NUANCE T 526/12 (unpublished) (31 August 2015)�� 278 Method for fabricating a dental appliance/ALIGN TECHNOLOGY INC T 0015/15 (unpublished) (16 March 2017)�� 9 Method for magnetic resonance imaging/PRINCE T 663/02 (unpublished) (17 March 2011)�� 260 Method for modifying gut flora in animals T 2251/14, ECLI:EP:BA:2018: T225114.20180710 (10 July 2018)�� 302 Method of producing a piston through casting / TOYOTA JIDOSHA KABUSHIKI KAISHA T 0151/05 (unpublished) (22 November 2007)�� 14 Method of supplementing animals with carotenoids by drinking water/ZHEJIANG MEDICINE CO T 1000/12 (unpublished) (17 December 2013)�� 14 Method to determine the Kt/V parameter in kidney substitution treatments T 0141/15 (unpublished) (3 March 2020)�� 260 Methods and systems for effecting payment card transactions/EUROPEAN TAX FREE SHOPPING LIMITED T 384/07 (unpublished) (8 September 2009)�� 243 Mexichem UK Ltd v Honeywell International Inc [2020] EWCA Civ 473, [2020] RPC 11, [2020] 3 WLUK 476; [2019] EWHC 3377 (Pat), [2019] 11 WLUK 581.�� 163 Michael Vasiliou v nicos Varnavas Hajigeorgiou [2005] EWCA Civ 236, [2005] 1 WLR 2195�� 528 Migrata UK Ltd & HemoCue v Bayer Sverige, case no T 468-99 (18 January 2002), Svea CA�� 241 Mika Pharma v Idea, No 991 of 7 July 2009, Corte di Appello di Torino�� 502 Milliken Denmark A/S v Walk Off Mats Ltd [1999] RPC 47 (1 December 1995)�� 42 Minakem v Melchior, docket No 17/15019 (6 July 2018), TGI Paris, Order of the case management judge�� 193 miR-1/MAX-PLANCK-GESELLSCHAFT T 1285/13 (unpublished) (20 October 2016)�� 239 Missing publication number/GENERAL ELECTRIC T 737/90 (unpublished) (9 September 1993)��306, 355 Mitsubishi Electric Corp v Oneplus Technology (Shenzhen) Co Ltd [2021] EWHC 493 (Pat), [2021] 3 WLUK 37 (4 March 2021)�� 181 MMI Research Ltd v Cellxion Ltd [2009] EWHC 418 (Pat), [2009] Info TLR 35 (11 March 2009)�� 73 MOBIL OIL/Friction reducing additives G2/88 93, 469 [1990] OJ EPO 93, [1990] EPOR 73 (11 December 1989).�� 302, 303, 304 Mobile Sanitary Solutions BV v TWT Verhuur, BV 200.222.873/01 (28 May 2019), Gerechtshof Den Haag�� 322 Modifying plant cells/ MYCOGEN PLANT SCIENCE 694/92 [1997] OJ EPO 408 (8 May 1996)��11, 314 Modul-System HH AB case no 11-164, Swedish Ct Pat App�� 43 Momentanpol II X ZB 13/06 GRUR 2008 887 (8 July 2008), BGH�� 273

Table of Cases lvii Monsanto Co v Stauffer Chemical Co [1985] RPC 515, (11 June 1985), CA��124, 125 Monsanto Technology v Cefetra (Case C-428/08) [2010] ECR I-06765 (6 July 2010), CJEU�� 92 Monsanto Technology LLC v Cargill International SA [2006] EWHC 2864 (Pat), (2007) 30(3) IPD 30018 (13 November 2006)�� 75 Moses LTD v SAS Joka no 19/1094 (9 April 2021), CA Paris, pole 5 – ch. 2�� 95 MP2-Geräten 6 U 34/12 GRUR 2014, 59 (8 May 2013), OLG Karlsruhe�� 111 MP3-Player-Import Xa ZR 2/08 GRUR 2009 1142 (17 September 2009), BGH��65, 536 MPEG2-Standard VIII I-2 U 124/08 (28 January 2010), OLG Düsseldorf��74, 138 MPEG2 Videosignalcodierung X ZR 33/10 (21 August 2012), BGH��77, 104 Mr L v Publicis Groupe & RATP 10/21790 (28 June 2013), Paris CA�� 250 MSD v Actavis, docket No 07/16296 (30 January 2015), CA Paris�� 300 MSD v EG Labo, RG 19/50245 (8 February 2019), TGI Paris�� 228 MSD v Teva, RG no° 10/23603, 01.12.2011, Order of the CA Paris�� 518 MSD v Teva, RG no° 10/23603, finasteride) 30.01.2015, CA Paris�� 518 MSD v Teva, 09/12713 (9 November 2010), TGI Paris��393, 394 MSD v Teva Santé, 10/23603 (30 January 2015)�� 394 MSD v Teva 200.082.008/02 (14 July 2015), Gerechtshof Den Haag�� 88 MSD v Teva 15/04934 (3 November 2017) (Ribavirin Case), Hoge Raad��88, 299 MSD Somerset v Teva Sante and others, 05/07130 (15 February 2008), TGI Paris�� 299 Multilayer polyurethane protective films T 2068/15 (unpublished) (25 January 2017)�� 283 Multi-layer printing process/AMCOR T 0768/20 (unpublished) (21 October 2021)�� 285 Mundipharma Laboratories GmbH v Medochemie Ltd 2008/01373 (21 July 2008), TGI Lyon�� 193 Mundipharma-Grunenthal/Mylan cases (21 July 2008, 20 October 2009 and 27 September 2012), France�� 84 MX v MY, 02-18650 (31 March 2004), Cass Com�� 27 Mylan v Astrazeneca,15/05880 (1 July 2016), TGI Paris�� 396–397 Mylan v Lilli and Icos 16/05073 (5 April 2018), TGI Paris�� 300 Mylan v Merck, docket No 17/14664 (7 March 2019), TGI Paris�� 228 Mylan v Merck and MSD docket No 19-06114, CA Paris�� 193 Mylan v Warner Lambert, 14/14370 (8 July 2016), TGI Paris�� 394 Mylan SAS; Generics (UK) Ltd v Warner-Lambert Co LLC 14/14370 (8 July 2016), TGI Paris�� 374 Napp v Asta Medica Ltd [1999] FSR 370 (23 October 1998), Patents Ct�� 119 Napp Pharmaceuticals Holdings Ltd v Dr Reddy’s Laboratories (UK) Ltd [2016] EWHC 1517 (Pat), [2017] RPC 4 (28 June 2016)��49, 69, 140 Napp Pharmaceutical Holdings Ltd v Sandoz Ltd [2009] EWCA Civ 252, [2009] RPC 18 (1 April 2009)�� 46 National Commercial Bank Jamaica Ltd v Olint Corp Ltd [2009] UKPC 16, [2009] 1 WLR 1405, [2009] Bus LR 1110�� 193 National prior right/MOBIL T550/88 [1992] OJ EPO 117 (27 March 1990)�� 274 Nautische Veroffentlichung Verlagsgesellschaft mbH v Staten genom Sjofartsverket (23 December 1999) MD 1994:25, MD 1999:28�� 97 Navcom v Philips [2000] BIE 2001/3 (26 April 2000), Rechtbank�� 360 Nestec SA v Dualit Ltd [2013] EWHC 923 (Pat), [2013] RPC 32 (22 April 2013), Pat Ct.��105, 106–107, 110, 295–296, 457, 482–483

lviii Table of Cases Neurim Pharmaceuticals (1991) Ltd v Generics (UK) Ltd [2020] EWCA Civ 793, [2021] RPC 7 (24 June 2020)�� 192–193 Neurim Pharmaceuticals (1991) Ltd v Generics (UK) Ltd (t/a Mylan) [2020] EWHC 3270 (Pat), [2020] 12 WLUK 84 (4 December 2020)�� 488 Neurim Pharmaceuticals (1991) Ltd v Generics (UK) Ltd (t/a Mylan) [2021] EWHC 530 (Pat), [2021] 3 WLUK 201 (12 March 2021)�� 488 Neurim Pharmaceuticals (1991) Ltd v Comptroller-General of Patents Case C-130/11 [2012] ECR I-0000, [2013] RPC 23 (19 July 2012), CJEU��411, 412, 413, 439 Neurodermitis-Behandlungsgerat 21 W (pat) 42/04 GRUR 2006, 1015 (22 May 2006), BPatG��376, 394 New enantiomers and their isolation EP 0 347 066 B1�� 363 Newell Rubbermaid v Vermop 200.094.832-01 + 200.094.837-01 + 200.072.139-01 (25 February 2014), Gerechtshof Den Haag�� 308 Newmat v Normalu, no° 06-19.149 (26 February 2008).�� 8 NGK Insulators T 0184/84 (unpublished) (4 April 1986)�� 292 NGL Vatten & Energiteknik AB v Lundberg VVS-produkter AB case no PMT 3243-19 (12 October 2020), Swedish Pat and Market CA�� 456 Nicoventures Trading Ltd v Philip Morris Products SA [2021] EWHC 1977 (Pat), [2021] 7 WLUK 171 (14 July 2021)�� 346 Nikken Kosakusho Works v Pioneer Trading Co [2004] EWHC 2246 (Ch), [2005] FSR 15, (2005) 28(2) IPD 28004 (8 October 2004)�� 42 Nikken Kosakusho Works v Pioneer Trading Co [2005] EWCA Civ 906, [2006] FSR 4 (29 June 2005).�� 45 Nikon v ASML (1 August 2018), Rechtbank Den Haag�� 496 Nintendo v France Brevet, 14/05090 (26 May 2016), TGI Paris��40, 41 NJA 1937, 90, Swedish Sup Ct�� 473 NJA 1945, 110, Swedish Sup Ct�� 473 NJA 1947, 692 II, Swedish Sup Ct�� 473 Nokia v Daimler, 4c O 17/19 (26 November 2020), LG Düsseldorf�� 178 Nokia v Continental, 21 O 9333/19 (2 October 2019), LG München; confirmed 6 U 5042/19 (12 December 2019), OLG München�� 188 Nokia Corp v Interdigital Technology Corp [2006] EWHC 802 (Pat), (2006) 29(7) IPD 29053�� 156 Nokia Corp v Interdigital Technology Corp [2006] EWCA Civ 1618, [2007] FSR 23�� 156 Nokia GmbH v IPCom GmbH & Co KG [2009] EWHC 3482 (Pat), [2010] Info TLR 1 (18 January 2010)�� 346 Nokia GmbH & Anor v IPCom GmbH & Co KG [2010] EWHC 789 (Pat), [2010] 3 WLUK 893 (31 March 2010)�� 486 Nokia Technologies Oy v Daimler AG Case C-182/21 (23 March 2021)�� 171 Nordson v Gema, O2013_008, 4.6 (25 August 2015), Swiss Fed Pat Ct�� 165 Norman v Stork Nijhuis BV, 94-13790 (16 January 1996), Cass Com�� 27 Northern Territory of Australia v Collins [2008] HCA 49, 235 CLR 619 (16 October 2008)�� 110 Notlaschenverbinder I-2 U 72/11 (4 April 2013), OLG Düsseldorf�� 452 Novartis v EG LABO 11/52706 (5 April 2011), TGI Paris�� 70 Novartis v Mylan and Qualimed 11/12942 (21 March 2012), Paris CA��201, 289 Novartis v Sun 200.150.713/01 (27 January 2015), Gerechtshof Den Haag.�� 88

Table of Cases lix Novartis v Teva C/09/500844 / KG ZA 15-1829 (30 March 2016), Rechtbank Den Haag,�� 497 Novartis AG v Generics (UK) Ltd [2012] EWCA Civ 1623, [2012] 12 WLUK 365 (12 December 2012)�� 327 Novartis AG v Hospira UK Ltd [2013] EWHC 1285 (Pat), [2013] 5 WLUK 334 (14 May 2013)�� 200–201 Novartis AG v Hospira UK Ltd [2013] EWCA Civ 583, [2014] RPC 3 (22 May 2013)��200, 201 Novartis AG v Sun Pharmaceutical Industries (Europe) BV C/09/460540 / KG ZA 14-1 (27 January 2015), Gerechtshof Den Haag�� 115–116 Novartis AG v Comptroller General of Patents, Designs and Trade Marks C-207/03; Millenium Pharmaceuticals C- 252/03, Joined Cases [2005] ECR I-03209 (21 April 2005), ECJ�� 428 Novartis AG and Norvartis Sverige AB v Orifarm Generics A/S and Orifarm Generics A, case no O 5232-15 (29 September 2015), Svea CA��89–90 Novartis AG and Novartis Sverige Aktiebolag v Orifarm Generics A/S and Orifarm Generics AB, case no O 2198-16 (16 June 2016), Swedish Patent and Market CA�� 196 Novartis Pharma AG and Novartis Sverige Aktiebolag v Teva Sweden Aktiebolag, case no PMT 9982-19 (3 September 2019), Swedish Patent and Market Ct��202, 203 Novel Compounds/MITSUBISHI T 0184/16 (unpublished) (12 December 2019)��383, 404, 407 NovogenResearch/Care for Women 105.004.393/01 (3 July 2008), Gerechtshof Den Haag�� 322 Novozymes v DSM [2010] B9 884 (17 February 2010), Rechtbank Den Haag�� 360, 366, 382 Oberster Gerichtshof 4 Ob 17/15a (22 September 2015), Austria�� 314 Obsessive-compulsive-disorder/PFIZER T 158/96 (unpublished) (28 October 1998)��391, 402 Occhio v Malvern RG A/09/663 (21 February 2013, Tribunal de Commerce Mons, Belgium�� 378 Oceanbulk Shipping & Trading SA v TMT Asia Ltd [2010] EWCA Civ 79�� 544 Okklusionsvorrichtung X ZR 16/09 GRUR 2011 701 (10 May 2011), BGH��29, 30, 55 Olanzapin X ZR 89/07 GRUR 2009 382 (16 December 2008), BGH��288, 321 OLG Düsseldorf I-15 U 135/14 (2 February 2015)�� 211 OLG Düsseldorf, docket No I-15 U 65/15 (13 January 2016)�� 211 OLG Düsseldorf 2 U 10/08 BeckRS 2010, 15659 (14 January 2010)�� 74 OLG Düsseldorf 2 U 43/12 BeckRS 2017, 162300 (29 March 2012)�� 514 OLG Düsseldorf 2 U 54/15 BeckRS 2016, 6344 (19 February 2016)�� 537 OLG Düsseldorf 2 W 14/15 BeckRS 2015, 15142 (4 August 2015)�� 535 OLG Düsseldorf 3 VA 2/06 NJOZ 2007, 685 (14 June 2006)�� 535 OLG Düsseldorf III-1 Ws 185/04 BeckRS 2011, 23460 (30 September 2004)�� 537 OLG Düsseldorf VII-Verg 20/15 BeckRS 2016, 2948 (1 December 2015)�� 85 OLG Düsseldorf 15 U 60/15 (14 February 2019)�� 136 OLG Frankfurt a M, PMZ 1949, 330�� 477 OLG Karlsruhe 6 VA 12/17 BeckRS 2017, 137506 (13 December 2017)�� 535 OLG Karlsruhe 6 U 161/17 GRUR -RS 2020, 39517 (25 November 2020)�� 104 OLG Koblenz 13 UF 175/14 BeckRS 2014, 20113 (14 July 2014)�� 522 Oliver Brüstle v Greenpeace eV C-34/10 [2011] ECR I-09821 (18 October 2011), CJEU��255–256, 263–264 Omnipharm Ltd v Merial [2011] EWHC 3393 (Pat), [2011] 12 WLUK 791 (21 December 2011)�� 383

lx Table of Cases On-demand instantiation/RAYTHEON T 1742/12 (unpublished) (22 June 2016)�� 317 Onco-Mouse/HARVARD T 19/90 [1990] OJ EPO 476 (3 October 1990).��254, 258 Oneplus Technology (Shenzhen) Co Ltd & Ors v Mitsubishi Electric Corp & Anor [2020] EWCA Civ 1562, [2021] FSR 13 (19 November 2020)��184, 539 Online-Identifizierungsverfahren 4c O 36/16 GRUR -RS 2017, 126637 (31 August 2017), LG Düsseldorf�� 514 Online-Sehtest 4a O 53/19 GRUR 2020, 1078 (28 July 2020), OLG Düsseldorf�� 67 Ono v INPI, 18/10522 (19 January 2021), Paris CA�� 419 Ono Pharmaceutical and Bristol-Myers Squibb Company v Schering-Plough and MSD, 16/51152 (15 March 2016), TGI Paris�� 131 Ono Pharmaceutical and Bristol-Myers Squibb Company v Schering-Plough and MSD, 16/51152 (15 March 2016), TGI Paris, Order in summary proceedings�� 215 OOO Abbott v Design & Display Ltd [2017] EWHC 932 (IPEC), [2017] FSR 43 (26 April 2017)��225, 226 OOO Abbott v Design & Display Ltd [2017] EWHC 2975 (IPEC), [2018] FSR 17 (22 November 2017).�� 225, 226–227 Optical sensor devie/CNOGA T 623/13 (unpublished) (1 December 2016)�� 377 Optical system/KONINKLIJKE PHILIPS ELECTRONICS T 471/05 (unpublished) (6 February 2007)�� 244 Opticaller Software AB v Telavox AB, joined cases no PMT 196-15 and PMT 4812-15 (20 April 2017), Swedish Pat and Market Ct�� 338 Optis Cellular Technology LLC v Apple Retail UK Ltd [2020] EWHC 2746 (Pat), [2020] 10 WLUK 278 (16 October 2020)�� 384 Optis Cellular Technology LLC v Apple Retail UK Ltd [2021] EWHC 1739 (Pat), [2021] 6 WLUK 370 (25 June 2021)�� 38 Optis Cellular Technology LLC & Ors v Apple Retail UK Ltd & Ors [2021] EWHC 2080 (Pat), [2021] 6 WLUK 578 (1 July 2021)�� 184 Optis Cellular Technology LLC & Ors v Apple Retail UK Ltd & Ors [2021] EWHC 2564 (Pat), [2021] 9 WLUK 276 (27 September 2021)�� 175 Oral Decision of 5 December 2018 T 1063/18 EPO, TBA; G3/19, EBA�� 258–259 Orange v Freebox 14/05735 (18 June 2015), TGI Paris�� 250 Order in summary proceedings, No 21/53136 (12 May 2021), TJ Paris�� 329 Organic light emitting devices/PRINCETON UNIVERSITY T 0544/12 (unpublished) 22 November 2013�� 356, 366–367 Organon Teknika v Hoffmann-La Roche [1996] FSR 383 (23 January 1996), Ch D (Patents Ct)�� 157 Orifarm Generics AB v Novartis AG and Novartis Sverige Aktiebolag, case no T 6267-19 (23 April 2021), Attunda District Ct��197, 207 Oriented grained Y-Ba-Cu-O superconductors/UNIVERSITY OF HOUSTON T 517/98 (unpublished) (17 January 2002)�� 356 Orion-Novartis v Eurogenerics A/15/0430 (9 May 2017), Tribunal de Commerce of Brussels�� 314 Östrogenblocker I-2 W 6/17 GRUR 2017, 1107 (5 May 2017), OLG Düsseldorf��86, 115 Ottung (Kai) v Klee & Weilbach A/S and Thomas Schmidt A/S (C-320/87) [1989] ECR I-01177 (12 May 1989), ECJ�� 459 Outer membrane protein immunogen Neisseria/GLAXOSMITHKLINE T 1581/12 (unpublished) (15 September 2016)�� 287

Table of Cases lxi Owners of Cargo Lately Laden on Board the Ship Tatry v Owners of the Ship Maciej Rataj (Case C-406/92) [1999] QB 515, ECLI:EU:C:1994:400 (6 December 1994), ECJ�� 509 Oxcarbazepine Stevens-Johnson Syndrome/ACADEMIA SINICA PHARMIGENE T 0967/16 (unpublished) (4 August 2020)�� 324 Paclitaxel freisetzender Stent 14 W (pat) 13/16 GRUR 2018, 64 (18 July 2017), BPat G�� 429 Palettenbehälter II X ZR 97/11 (July 2012), BGH��70–71 Pall Corp v Commercial Hydraulics [1990] FSR 329 (25 July 1989), Pat Ct�� 280–282 Pall Corp v Commercial Hydraulics (Bedford) Ltd [1989] RPC 703 (7 November 1988), CA�� 283 Palmaz’s European Patents [1999] RPC 47 (26 June 1998), Pat Ct�� 308 Panayiotou v Sony Music Entertainment (UK) Ltd [1994] Ch 142, [1994] 1 All ER 755 (15 July 1993), ChD�� 535 Papst v Mecanique de l’Est, docket No 14/16022 (10 March 2017), TGI Paris�� 230 Parfym Sverige AB v Coty Germany GmbH NJA 2015, 605, Swedish Sup Ct�� 521 Paris Cour d’Appel 2000/15216 (10 October 2003)�� 454 Partial Priority/INFINEUM T 0557/13 (unpublished) (17 July 2015)�� 295 Partial Priority/INFINEUM T 0557b/13 (unpublished) (17 July 2015)�� 295 Particulate detergent composition/ UNILEVER T606/89 (unpublished) (18 September 1990)��315, 317 Paul Robert v Administrator of CF Gomma Barre, T12-14.803 (13 November 2013), Cass Com�� 359 Pavel v Sony Corp, unreported, 13 January 1993, Patents Cty Ct�� 110 PC Electric GmbH v ABB AB, case no O 4315-12 (21 September 2012), Svea CA�� 197 PCME Ltd v Goyen Controls Co UK Ltd [1999] FSR 801 (22 January 1999).�� 47 Pedestrian simulation/CONNOR T 0489/14 (22 February 2019); on referral G1/19 (10 March 2021), EPO boards of Appeal.�� 337 Pemetrexed cases��39, 52 Pemetrexed X ZR 29/15 GRUR 2016 921 (14 June 2016), BGH�� 41, 55–56, 62, 78, 86, 115, 122 Pemetrexeddinatrium 4b O 114/12 U (3 April 2014), LG Düsseldorf�� 55 Pemetrexeddinatrium I-2 U 16/14 (5 March 2015), OLG Düsseldorf�� 55 Pemetrexed BGE 143 III 666 (20 October 2017), Swiss Fed Sup Ct�� 30, 36–37, 41 Pencil sharpener T 176/84 [1986] OJ EPO 50, [1986] EPOR 117, [1985] 11 WLUK 209 (22 November 1985)�� 9 Penem derivatives/PFIZER T 1048/92 (unpublished) (5 December 1994)�� 287 Per Aarsleff A/S v Pentalnventions AB, case no PMT 585-19 (5 March 2020), Swedish Patent and Market CA��43, 514 Perception of Fatigue/MIT T 469/94 (unpublished) (1 July 1997)�� 261 Perpetuum mobile 9 W (pat) 3 / 98 GRUR 1999 487 (28 October 1998), BPAtG�� 390 Pfizer v F Hoffmann La-Roche [2019] EWHC 1520 (Pat), [2019] RPC 14 (20 June 2019), Pat Ct�� 162 Pfizer v Roche, ECLI:NL:RBDHA:2019:4515, 8 May 2019, Rechtbank Den Haag.�� 164 Pfizer v Sintex 86-19.521 (13 December 1988), Cour de Cassation�� 76 Pfizer AB v STADApharm AB NJA 2008, s 1192, Swedish Sup Ct��202, 203 Pfizer Ireland Pharmaceuticals, Operations Support Group v Orifarm GmbH Case C-681/16, ECLI:EU:C:2018:484 (21 June 2018)�� 434–435

lxii Table of Cases Pfizer Ltd v Biogaran, Sanofi et al 16/57469 (2 December 2016), TGI Paris�� 113–114, 455 Pfizer Ltd / Chemo Iberica AC 2002/235 (12 June 2001), Barcelona CA�� 104 Pfizer Ltd’s Patent, Re [2001] FSR 16 (10 November 2000), Patents Ct�� 43 Pharmaceutical Price Index 4Ob54/12p (12 June 2012), Oberster Gerichtshof, Austria�� 68 Pharmachemie / Glaxo 11/01662 (22 June 2012), Hoge Raad�� 68 Pharmacia Corp v Merck & Co Inc [2001] EWCA Civ 1610, [2002] RPC 41 (14 December 2001), CA�� 357 Philips v Asus I, ECLI:NL:GHDHA:2019:1065, 7 May 2019, Gerechtshof Den Haag��178, 183 Philips v Asus II, ECLI:NL:GHDHA:2019:3535 24 December 2019, Gerechtshof Den Haag�� 178, 182, 183 Philips v Asustek Computer Inc [2019] EWCA Civ 2230, [2020] RPC 1, [2019] 12 WLUK 214�� 18 Philips v Tasseron IEF 12127, NJ 1930/1217, NJ 1930/1219 (20 June 1930), Hoge Raad, Netherlands��32, 144 Philips v Wiko, 6 U 183/16 (30 October 2019), OLG Karlsruhe�� 185 Philips v Wiko I, ECLI:NL:GHDHA:2019:3613 (2 July 2019), Gerechtshof Den Haag�� 178, 183, 185 Philips v Wiko II, ECLI:NL:GHDHA: 2019:3613 (24 December 2019), Gerechtshof Den Haag��182, 183 Philips v Xiaomi, C/09/608337 / HA ZA, 21-223 14 July 2021, District Ct of The Hague�� 185 Phosphorodithioates/LUBRIZOL T68/93 (unpublished) (24 January 1995)�� 274 Photocatalytic concrete/ITALCEMENTI SPA T 1513/11 (unpublished) (25 July 2016)�� 280 Photovoltaic module/KANEKA CORPORATION T 1829/06 (unpublished) (10 November 2009)�� 282 PI judge Rechtbank Den Haag, 30-10-2019, nr. C/09/578982 /KG ZA 19-813�� 195 PI judge Rechtbank Den Haag, 10 December 2019, nr. C/09/580126 / KG ZA 19-882, 5.9�� 195 Piaggio v Peugrot Motocycles SAS, (21 September 2021) docket No 15/06549, TJ Paris 3.3�� 531 PIB 1987, no°420, III, 381 (11 May 1987), CA Paris�� 297 PIBD 1992, III, 326 (16 January 1992), CA Paris�� 284 PIBD 1997, 644-III-633 (17 September 1997), Paris CA�� 283 Pioneer Electronics Capital Inc v Warner Music Manufacturing Europe GmbH [1995] RPC 487 (27 July 1995), Patents Ct�� 75 Pipettensystem X ZR 38/06 GRUR 2007 769 (27 February 2007), BGH��70, 104, 105 Plant cells/PLANT GENETIC SYSTEMS T 356/93 [1995] OJ EPO 545 (21 February 1995)�� 254, 255, 257, 259 Plant for transmitting electric power/ABB T 473/13 (unpublished) (11 May 2016)�� 283 Plasmid pTR2030/NORTH CAROLINA STATE UNIVERSITY T 576/91 (unpublished) (18 May 1993)�� 282 Plasterboard production/BAYER T 602/91 (unpublished) (13 September 1994)�� 283 Plastus Kreativ AB v Minnesota Mining & Manufacturing Co [1995] RPC 438, (9 December 1994), Pat Ct�� 503–504 ‘Plausibility’ G2/21 (pending), EBA��398, 408 PLG Research Ltd v Ardon International Ltd [1995] RPC 287, [1995] FSR 116 (16 November 1994), CA��319, 333 Plymouth v Samex 02-21585 (28 April 2004), Cour de Cassation�� 465

Table of Cases lxiii Polycarbonate resin composition/GE PLASTICS T 62/05 (unpublished) (14 November 2006)�� 296 Polyether-based preparations/3M T 0260/14 (unpublished) (13 April 2017)�� 295 Polyethylene terephthalate resin-coated metal plate/TOYO KOHAN T 0593/09 (unpublished) (20 December 2011)�� 377 Polyferon X ZR 26/92 GRUR 1996 190 (5 December 1995), BGH�� 470 Polymer Composition X ZR 134/11 (12 December 2012), BGH�� 15 Polymerisationsbeschleuniger Ia ZR 152/63 GRUR 1965 138 (5 November 1964), BGH�� 359 Polymerschaum X ZR 117/11GRUR 2012 1124 (17 July 2012), BGH�� 293 Polypeptide expression/GENENTECH I T 292/85 [1989] OJ EPO 275 (27 January 1988)��355, 357, 381, 382 Polyurethane coating materials T 742/89 (unpublished) (2 November 1992).�� 406 Porous Intravascular Embolization Particles and Methods of Making Them/BIOSPHERE MEDICAL T 0061/14 (unpublished) (15 March 2016)�� 355 Portal system/ACCENTURE T 528/07 (unpublished) (27 April 2010)�� 245 Poseidon Industri AB v Cerosa Ltd [1982] FSR 209, [1975] 12 WLUK 47 (10 December 1975), CA�� 42 Potez c Airflam Ann. PI 1966.54 (7 November 1966) Paris CA,�� 143 Power supply unit/TELEMECHANIQUE T 482/89 [1992] OJ EPO 646 (11 December 1990)�� 282 Power Tools Sprackutrustning i Herrljunga AB v AB Etken Teknologi et al, case no PMT 10710-17 (2 July 2019), Swedish Patent and Market CA�� 514 Pozzoli Spa v BDMO SA [2007] EWCA Civ 588, [2007] FSR 37 (22 June 2007)�� 318–319, 328, 342, 351, 352 Practice Direction (Patents Court: Practice Explanation) [1996] 1 WLR 1567, [1997] RPC 166 (19 November 1996)�� 533 Practice Direction (Patents Court: Revised Procedure) [1998] 1 WLR 1414, [1998] RPC 653 (21 May 1998)�� 533 Pranatale Diagnostik, GRUR -Prax 2018, 26 (23 March 2017), OLG Düsseldorf�� 67 Pregabalin 327 0 67/12 (2 April 2015), LG Hamburg��86, 114 Prepaid Karten, I-2 U 51/08 Mitt. 2010, 237 (10 December 2009), OLG Düsseldorf�� 67 Preprorennin T 0081/87 [1990] OJ 250 (24 January 1989)��292, 293 Presentation of operating instructions/GAMBRO T 336/14 (unpublished) (2 September 2015)�� 245 Prior use/PACKARD INSTRUMENT T 952/92 [1995] OJ EPO 755 (17 August 1994)�� 280 Priority interval G3/93 [1995] OJ EPO 18 (16 August 1994)�� 291 Process and catalyst for polyolefin density and molecular weight control/EXXONMOBIL T 314/99 (unpublished) (21 June 2001)�� 279 Process for dosing an additive into a fuel/ INNOSPEC LIMITED T 1989/08 (unpublished) (21 July 2010)�� 342 Process for manufacturing a composite workpiece/ARCELORMITTAL T 146/13 (unpublished) (30 January 2015)�� 278 Process for preparing polycarbonates/GENERAL ELECTRIC COMPANY T 0786/00 (unpublished) (19 December 2001)�� 14 Process for the production of pre-foamed particles/JAPAN STYRENE T 444/88 (unpublished) (9 May 1990)�� 278 PROCTER & GAMBLE T 1408/04 (17 November 2006)�� 344

lxiv Table of Cases Productores de Musica de Espana (Promusicae) v Telefonica de Espana SAU Case C-275/06 [2008] ECR I-271 (29 January 2008), ECJ�� 210 Programs for Computers / Referral by the President of the EPO G3/08 [2011] OJ EPO 10 (16 October 2009), Enlarged Board of Appeal�� 247–248, 335 Promptu Systems Corpn v Sky UK Ltd [2021] EWHC 2021 (Pat), [2021] 7 WLUK 216 (19 July 2021)��66, 111, 308 Property Alliance Group Ltd v Royal Bank of Scotland Plc [2015] EWHC 3341 (Ch), [2016] 4 WLR 3 (20 November 2015)�� 544 Propylene-ethylene copolymers/BASELL T 0089/13 (unpublished) (3 May 2016)�� 377 Proras srl v Ades et al 7 February 2020, No 2977, Ct of Cassation, Italy��31, 32 Prosyscor Ltd v Netsweeper Inc [2019] EWHC 1302 (IPEC), [2019] 5 WLUK 347 (22 May 2019)��443, 444 Prudential Assurance Co Ltd v Prudential Insurance Co of America [2003] EWCA Civ 327, [2004] FSR 25 (12 March 2003)�� 499 Prufstandsparametrierung I-2 U 23/14 BeckRS 2017, 109820 (27 April 2017), OLG Düsseldorf�� 74 Pteridin derivative/Kanegafuchi (unpublished) (16 January 1997) T 0311/93�� 291 Public availability/HYDRO-QUEBEC T 834/09 (unpublished) (2 February 2012)�� 279 PyrazoLone dyes, US Patent No 1506316, (Markush) Aug 26 1924�� 365 Pyrazolopyrimidinones for the treatment of impotence/PFIZER LIMITED T 1212/01 (unpublished) (3 February 2005)�� 340 Quads 4 Kids v Colin Campbell [2006] EWHC 2482 (Ch), [2006] Info TLR 338 (13 October 2006)�� 92 Qualcomm Inc v Nokia Corp [2008] EWHC 329 (Pat), [2008] 3 WLUK 3 (3 March 2008)�� 43 Quantum v DMS C/09/526366/KG ZA 17-154 (13 June 2017), Rechtbank Den Haag�� 41 RA 1990 ref. 84, Swedish Sup Ad Ct�� 35 RA 1998 ref. 4 (12 February 1998), Sweden�� 322 Rabaud v Societe d’equipement pour l’environnement SAS (SEE), 14/10335 (17 May 2016), CA Paris 5.1�� 109 Rabaud v Societe d’equipement pour l’environnement (SEE), (27 June 2018), pourvoi no°16-20.644, Cass Com��27, 28 Radial tyre/SUMITOMO T 676/94 (unpublished) (6 February 1996)�� 17 Railroad line bed/INDUSTRIA PREFABRICATI T 0605/91 (unpublished) (20 July 1993)�� 340 Railway Vehicle with Propulsion Means I, O2012_043 (10 June 2016), Swiss Fed Pat Ct�� 146 Raltegravir X ZB 2/17 GRUR 2017 1017 (11 July 2017), BGH�� 470 Ramipril X ZR 102/06 GRUR 2008 606 (4 December 2007), BGH�� 450 Ranbaxy (UK) Ltd v AstraZeneca AB [2011] EWHC 1831 (Pat), [2011] FSR 45 (15 July 2011)��43, 75 RBS (Rights Issue Litigation), Re [2016] EWHC 3161 (Ch), [2017] 1 WLR 1991 (8 December 2016)�� 542 RDPI 1998 86 (16 January 1998), Paris CA�� 283 RDS radio system/BBC T 744/99 (unpublished) (15 January 2002�� 292 Reach-through claim T 1063/06 [2009] OJ EPO 516 (3 February 2009)��356, 366 Reactec Ltd v Curotec Team Ltd [2020] CSOH 77, 2020 SLT 783 (31 July 2020)�� 27 Reaction injection moulded polyurethane elastomers/TEXACO T 279/89 (unpublished) (3 July 1991)�� 289

Table of Cases lxv Reactivity of exhaust products/ETHYL CORPORATION T717/98 (unpublished) (4 November 2002)�� 272 Realchemie Nederland Case C-406/09 [2011] ECR I-9773 (18 October 2011), ECJ.�� 491 Reckitt Benkiser UK Ltd v Home Pairfum Ltd [2004] EWHC 302 (Pat), [2004] FSR 37 (13 February 2004)�� 92 Redox Catalyst/AIR PRODUCTS T171/84 [1986] OJ EPO 95, [1986] EPOR 210 (24 October 1985), European Patent Office (TBA)�� 17 Reduced-viscocity concentrated protein formulations/GENENTECH T 99/13 (unpublished) (14 January 2016)�� 305 Regeneron Pharmaceuticals Inc v Kymab Ltd & Anor [2016] EWHC 87 (Pat), [2016] 2 WLUK 13 (01 February 2016)�� 358 Regeneron Pharmaceuticals v Kymab Ltd [2018] EWCA Civ 1186, [2018] RPC 15 (23 May 2018)��229, 358 Regeneron Pharmaceuticals Inc v Kymab Ltd & Novo Nordisk A/S [2018] EWCA Civ 671, [2018] RPC 14 (28 March 2018).��212–213, 216, 361 Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27, [2021] 1 All ER 475, [2020] Bus LR 1394, [2020] RPC 22 (24 June 2020)�� 357, 362–363, 365, 368, 381, 397 Regeneron Pharmaceuticals Inc and Bayer Pharma AG v Genentech Inc [2012] EWHC 657 (Pat), (2012) 109(25) LSG 19 (22 March 2012)��391, 392 Regeneron Pharmaceuticals Inc and Bayer Pharma AG v Genentech Inc [2013] EWCA Civ 93, [2013] RPC 28 (21 February 2013)��43, 370, 375, 391, 392 Relative dimensions in drawings/KIRCHNER T 2052/14 (unpublished) (24 June 2016)�� 274 Renaissance Technologies Plc v Comptroller General of Patents, Designs and Trade Marks [2021] EWHC 2113 (Ch), [2021] 7 WLUK 436 (27 July 2021)�� 249 Respiratory function of a mammal/AEROCRINE T 0125/02 (unpublished) (23 May 2006)�� 263 Restoration of cancer-suppressing functions to neoplastic cells through DNA hypomethylation/SuperGen T 1616/09 (unpublished) (27 August 2014)�� 354 Rezeptortyroskinase II X ZR 124/15 GRUR 2017, 261 (27 September 2016), BGH�� 77 Rhodia Chimie v Daiichi Kigenso Kagaku Kogyo, No 2003/13377 (10 March 2004), CA Paris�� 278 Ribavirin 4a 0 12/03 GRUR-RR 2004 193 (24 February 2004), LG Düsseldorf��85, 114 Richardson-Vicks Inc’s Patent [1997] RPC 888, [1997] 4 WLUK 321 (23 April 1997), CA��343 Richter v HRA Pharma and Mylan 15/16651 (2 March 2018), Paris CA�� 300 Richter Gedeon Vegyeszeti Gyar RT v Generics (UK) Ltd (t/a Mylan) [2016] EWCA Civ 410, [2016] 4 WLUK 541 (26 April 2016)�� 16 Ricky Edwards-Tubbs v JD Wetherspoon [2011] EWCA Civ 136, [2011] 1 WLR 1373.�� 528 Riluzol 4b O 135/12 (19 October 2012), OLG Düsseldorf.�� 201 RIM v Motorola [2010] EWHC 288 (Pat) (3 February 2010)�� 111 Roche v Primus II C02/228HR en C02/280HR (30 November 2007), Hoge Raad�� 497 Roche Diagnostics v EveryMed, case no T 20619-09 (27 May 2011), Stockholm District Ct��360, 361 Roche Diagnostics v EveryMed, case no T 5531-11 (27 May 2011), Svea CA�� 330, 360, 361 Roche Diagnostics v EveryMed, case no T 5531-11 (27 June 2012), Svea CA�� 241

lxvi Table of Cases Roche Nederland v Frederick Primus & Milton Goldenberg Case C-539/03 ECLI:EU:C:2005:749, (8 December 2005), Ad-Gen’s Opinion�� 495 Roche Nederland v Frederick Primus & Milton Goldenberg Case C-539/03 [2006] ECR I-06535 (13 July 2006), ECJ�� 494, 495, 496, 497, 500, 501, 506, 507 Rockwater Ltd v Coflexip SA [2003] EWHC 812 (Pat), (2003) 26(6) IPD 26039�� 340 Rockwater Ltd v Technip France SA [2004] EWCA Civ 381, [2004] RPC 46 (1 April 2004)��7, 526 Rockwool/Isover C06/021HR (15 February 2008), Hoge Raad�� 322, 330, 339 Rolltraller (1973) GRUR Int 703�� 135 Routenplanung X ZR 3/12 (18 December 2012), BGH�� 338 Rotatable snapping connection/OTICON T 0894/19 (unpublished) (26 August 2021)�� 325 Rotationsburstenwerkzeug X ZR 108/91 GRUR 1994 602 (24 March 1994), BGH�� 458 Rotocrop International Ltd v Genbourne Ltd [1982] FSR 241 (31 July 1980), CHD (Patents Ct).��72–73 Roussel Uclaf, Agrevo Prodetech et Hoechst Marion Roussel v Agridis, Surcouf, de C (7 March 2000), TGI, Paris�� 138 Rovi Solutions Corp v United Video Properties Inc [2014] EWHC 1559, [2014] 5 WLUK 469 (15 May 2014).�� 43 Royalty Pharma Collection Trust/Deutsches Patent-und Markenamt Case C-650/17 ECLI:EU:C:2020:327 (30 April 2020), CJEU�� 418–419 Royalty Pharma v INPI, 17/04327 (15 October 2021), CA Paris�� 419 Rubber composition/BRIDGESTONE T 1994/12 (unpublished) (19 April 2016)�� 354 Rückstrahlende Folie 6 U 13/12 GRUR -RS 2017, 131325 (22 February 2017), OLG Karlsruhe�� 65 Rush & Tompkins Ltd v Greater London Council [1989] AC 1280, [1988] 3 WLR 939 (3 November 1988), HL�� 544 S (Alain) v Bosch Systemes de Freinage (Sté) (12 September 2003) Paris CA�� 444 SA Bourgeois v SA PIMAS ORTHOPEDIE, Societe BRAUN CORPORATION, 05-21452 (26 February 2008), Cass Com�� 27 SA FN Herstal v Heckler & Koch GmbH (28 April 2017), Tribunal de Commerce Francophone de Bruxelles�� 339 SA Multy Pack v Société Sacchettificio Lima 03/12470 (5 November 2004), TGI Paris��105, 109 SA Pellenc v SA Extrussion de Basse Normandie Exbanor docket No 15/01290 (29 September 2016), TGI Paris�� 216 SA Pellenc v SA Extrussion de Basse Normandie Exbanor 16/23925 (9 February 2018), Paris CA�� 216 SA Publi Embal v Société Coprima, 06/05136 (3 December 2018), Rennes CA�� 105 SAAB v Sir James Martin, Dennham, England with intervenor Ministry of Defence case no I 59/1970 (16 February 1972) (published in U.1972.325H), Danish Maritime and Commercial Ct�� 474 Sabaf Spa v MFI Furniture Centres Ltd [2002] EWCA Civ 976, [2003] RPC 14 (11 July 2002)�� 118 Sabaf SpA v MFI Furniture Centres Ltd [2004] UKHL 45, [2005] RPC 10 (14 October 2004)�� 346 Sagem v Acome, 05/10728 (5 April 2006), Paris CA�� 39

Table of Cases lxvii Saint-Gobain PAM SA v Fusion Provida Ltd [2005] EWCA Civ 177, (2005) 28(6) I PD 28043, (25 February 2005), CA�� 326 Sample holder for secondary ion mass spectrometry/SIEMANS T 551/89 (unpublished) (20 March 1990)�� 345 Samsung v Apple France et al docket No 11/58301 (08 December 2011), TGI Paris�� 183 Samsung Electronics Co Ltd v Apple Retail UK Ltd, Apple Sales International [2013] EWHC 467 (Pat), [2013] 3 WLUK 181 (7 March 2013)�� 292 Samsung Electronics Co Ltd v Apple Retail UK Ltd, Apple Sales International [2013] EWHC 468 (Pat), [2013] 3 WLUK 180�� 384 Samsung Electronic Co Ltd and Samsung Electronic Italia Spa vs Apple Inc, Apple Italia Srl, Apple Retail Italia Srl and Apple Sales International (January 2012), Ct of Milan�� 179 Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 2049 (Pat), [2012] 7 WLUK 541 (18 July 2012), Pat Ct�� 229 Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339, [2013] FSR 9 (18 October 2012)�� 229 Samsung Electronics Co Ltd v Apple Retail UK Ltd [2014] EWCA Civ 250, [2015] RPC 3 (11 March 2014)�� 486 Samsung Electronics Co Ltd v Apple Retail UK Ltd [2014] EWCA Civ 376, [2014] 4 WLUK 1�� 486 Sandoz v Eli Lilly 10/17727 (13 January 2012) CA Paris��15, 320 Sandoz v Mundipharma, case no PMT 9839-17 (21 February 2019), Sweden�� 517 Sandoz Ltd v GD Searle LLC [2017] EWHC 987 (Pat), [2019] ECC 3 (3 May 2017), Pat Ct��418, 423 Sandoz Ltd v GD Searle LLC [2018] EWCA Civ 49, [2018] 1 WLUK 390 (25 January 2018)�� 423–424 Sandoz Ltd, Hexal AG/G.D. Seale LLC, Janssen Sciences Ireland, Case C-114/18, Order ECLI:EU:C:2020:68 (17 January 2020)�� 424 Sandvik Aktiebolag v Iggesund Skogstjanst Aktiebolag case no T 15879-98 (23 September 1998), Stockholm District Ct.�� 104 Sandvik Intellectual Property AB v Kennametal UK Ltd, Kennametal Europe GMBH [2011] EWHC 3311 (Pat), [2012] RPC 23 (15 December 2011)�� 378 Sanipat v Hafner O2019_005 (3 May 2021), Switzerland�� 490 Sanofi v Amgen 3 LiQ 1/18 (6 and 7 September 2018), BPatG�� 470 Sanofi v Amgen, X ZB 2/19 (4 June 2019), BGH�� 470 Sanofi v Lilly France, 14/58023 (15 December 2014), TGI Paris, ord. ref�� 131 Sanofi v Mylan (irbesartan), 12/55804 (10 August 2012), TGI Paris�� 69 Sanofi Aventis France v Novartis, docket No 11/20113 (11 December 2012), CA Paris; confirmed no°13-10.189 (16 September 2014), French Supreme Ct.�� 209 Santen v Director of the French Patent Office Case C-673/18 ECLI:EU:C:2020:531 (9 July 2020), CJEU�� 411–412, 439 Sara Lee/DE/Intergro, ECLI:NL:HR:2003:A10346 (31 October 2013), Dutch Supreme Ct (Hoge Raad)�� 104 SARL CERIC ACCESSOIRES v SARLU JO INVEST case no 16/16760 (16 April 2021), CA Paris�� 457 SARL Complemen’hair v Societe Complement hair, 17/01202 (4 December 2018), CA Paris 5.1�� 28

lxviii Table of Cases Sarl Filtech v Société Rupofil 00/04626 (19 September 2002), Lyon CA�� 105 SAS I-Tek v EARL du Drennec, No 18/21115 (19 January 2021), CA Paris�� 320 SAS Santed v INPI 17/19934 (9 October 2018), French CA�� 412 Satellite broadcast recording/SONY T 55/01 (unpublished) (11 February 2003)�� 278 Saturated dicarboxylic acids/COGNIS T 1014/07 (unpublished) (2 July 2012)�� 339 SBM v Bluewater 259706 / HA ZA 06-544 (11 April 2007) Rechtbank Den Haag�� 111 SCA Tissue France SAS v Industrie Cartarie Tronchetti Iberica SL 84/2018 (26 March 2018), Barcelona Comm Ct No 1��13, 314 Scarlet Extended SA v Société Belge des Auteurs, Composituers et Editeurs (SABAM) Case C-70/10 [2011] ECR I-11959 (24 November 2011), CJEU�� 210 Schering-Plough Ltd v Norbrook Laboratories Ltd [2005] EWHC 2532 (Ch), [2006] FSR 18 (18 November 2005), Pat Ct�� 345 Schindler v Otis 1143 of (27 January 2014), Tribunale di Milano�� 502 Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819, [2010] RPC 33 (28 July 2010)�� 11–12, 314 Schlusselpaarberechnung/GIESECKE & DEVRIENT T 1326/06 (unpublished) (30 November 2010)�� 244 Schmiedlin v Sel-Rex BGE 92 II 280 (28 June 1966), Swiss Fed Sup Ct�� 361 Schmierfettzusammernsetzung X ZR 168/96 GRUR 2000 296 (30 September 1999), BGH�� 288 Schneider/Cordis, BIE 2007/13 (8 June 2005), Rechtbank Den Haag�� 144 Schneidmesser II X ZR 135/01 GRUR 2002 519 (12 March 2002), BGH��29, 51 Schneidmesser l X ZR 168/00 GRUR 2002, 515, BGH �� 29, 30, 38, 55, 62 Schnellkopiergerät I ZR 40/53 GRUR 1955 286 (16 November 1954), BGH�� 454 Schutz (UK) Ltd v Werit (UK) Ltd [2010] EWHC 660 (Pat), [2010] FSR 22 (31 March 2010)�� 533 Schutz (UK) Ltd v Werit (UK) Ltd [2013] UKSC 16, [2013] RPC 16 (13 March 2013)��4, 71, 106, 107, 457, 483 Schutzkontaktstecker Ia ZR 21/63 BeckRS 1963, 31379110 (23 April 1963), BGH�� 344 Schutzverkleidung X ZR 95/18 GRUR 2019 1171 (14 May 2019), BGH�� 144 Schwungrad 4 O 128/00 GRUR Int 2001, 983 (31 May 2001), LG Düsseldorf�� 498 Science Union, Servier v Corbiere et Bellon (27 November 1984) (Dioriven Case), Paris CA, 4e ch�� 126 Searle v Sandoz C/09/561999 / KG ZA 18-1112 (1 November 2018) PI judge Rechtbank Den Haag�� 195 Seattle Genetics Inc v Osterreichisches Patentamt Case C-471/14, ECLI:EU:C:2015:659 (6 October 2015), CJEU�� 433 SEB v Societe De’Longhi [2003] EWCA Civ 952, [2003] 7 WLUK 152 (4 July 2003)�� 42 SEB Diffusion v Fiprofil, SA Pellenc v SA Extrussion de Basse Normandie Exbanor, docket No 13/16435 (29 October 2019), CA Paris�� 216 Second medical indication/BAYER G1/83 [1985] OJ EPO 60 (5 December 1984)�� 259 Second medical indication/EISAI G5/83 [1985] OJ EPO 64 [1979-85] EPOR B241 (5 December 1984)��78, 259, 260, 261, 262 Second medical indication/EISAI G 6/83 [1985] OJ EPO 67 (5 December 1984)�� 259 Secure buffering/BROADCOM CORPORATION T 1030/06 (unpublished) (17 December 2008)�� 9 Securing access to a digital resource/BOUYGUES T 286/10 (unpublished) (21 May 2014)��286

Table of Cases lxix Security Device and its Production Method/De La Rue T 1285/15 (unpublished) (18 November 2019)�� 377 Security document/ KXO AG T 1145/15 (unpublished) (14 November 2017)�� 316 Selecting psychotropic medications/MAYO FOUNDATION 0758/12 (unpublished) (4 July 2017)�� 244 Sepracor Inc v Hoechst Marion Roussel Ltd [1999] FSR 746 (29 January 1999), Pat Ct�� 504 Serine protease inhibitors/AMGEN T 429/96 (unpublished) (31 May 2001)�� 355 Serotonin receptor/ELI LILLY T 241/95 [2001] OJ EPO 103 (14 June 2000)��391, 402 Setting accelerator/SIKA T 897/07 (unpublished) (3 May 2011)�� 282 Shanks v Unilever plc [2019] UKSC 45, [2019] 1 WLR 5997, [2019] Bus LR 2730, [2019] RPC 24�� 448–449 Sharpe & Dohme Inc v Boots Pure Drug Co Ltd (1927) 44 RPC 367, ChD�� 276 Shear/GREHAL T 305/87 [1991] OJ EPO 429 (1 September 1989)��267, 276 Shelfer v City of London Electric Lighting Co (No 1) [1895] 1 Ch 287 (18 December 1894), CA�� 214 Shionogi, Astrazeneca v Biogaran, no° 16/13292 (9 February 2018), TGI Paris 3.2�� 108, 135–136 Shopping with mobile device/NOKIA T 1670/07 (unpublished) (11 July 2013)�� 335 Siemens Schweiz AG v Thorn Security Ltd [2008] EWCA Civ 1161, [2009] RPC 3 (22 October 2008)�� 47 Sienkiewicz v Greif (UK) Ltd [2011] UKSC 10, [2011] 2 AC 229, [2011] 2 WLR 523, [2011] ICR 391�� 140 Signal vision c Axo 14 258/86 (3 July 2014), CFI Paris�� 143 Sigg and Albanese v Magert Bautechnik (9 December 1998) BGE 125 III 29, Swiss Fed Sup Ct�� 36 Silver catalyst/SD T 0764/14 (unpublished) (11 November 2015)�� 377 Simethicone Tablet/RIDER T 2/83 [1984] OJ EPO 265 (15 March 1984)�� 323, 324, 339 Simethicone Tablet/RIDER T 37/85 [1988] OJ EPO 86 (15 March 1984)�� 339 Simvastatin X ZR 76/05 GRUR 2007, 221 (5 December 2006), BGH��68, 437 Sisvel v Haier I-15 U 65/15 (30 March 2017), OLG Düsseldorf�� 177 Sisvel v Haier, ‘FRAND Einwand’, KZR 36/17 (5 May 2020), BGH�� 177 Sisvel v Haier, ‘FRAND Einwand II’, KZR 35/17 (24 November 2020), BGH�� 177 Sisvel v Oppo, C/09/578930 /HA ZA, 19-884 (15 January 2020), District Ct of The Hague��185, 540 Sitagliptin III,14W (pat) 12/17 (17 October 2017), BpatG�� 418 Sitagliptin V 14 W (pat) 12/17 (2 September 2020), BPatG��419, 438 Sitosterylglykoside X ZB 21/8 GRUR 1982, 548 (3 June 1982), BGH�� 78 Sludge Treatment BGE 138 III 76 (31 January 2012), Swiss Fed Sup Ct�� 521 SMI 1972, 41 (17 November 1970), Swiss Fed Sup Ct�� 361 Smith & Nephew v Convatec Technologies Inc [2013] EWHC 3955 (Pat), [2014] RPC 22 (12 December 2013), Pat Ct��216, 234 Smith & Nephew v ConvaTech Technologies Inc [2015] EWCA Civ 607, [2015] RPC 32 (24 June 2015).�� 48–49, 216 Smith Kline & French Laboratories Ltd v Evans Medical Ltd [1989] 1 FSR 513 (10 November 1988)�� 135 Smithkline Beecham Plc v Apotex Europe Ltd [2003] EWCA Civ 137, [2003] FSR 31 (14 February 2003)��68, 199 Smithkline Beecham v Apotex Europe Ltd [2004] EWCA Civ 1568, [2005] FSR 23�� 531–532

lxx Table of Cases Société Apotex France and Société Apotex Inc v Wellcome Foundation Ltd, PIBD 2001 III 429 (15 September 2000), Paris CA�� 298 Société Clinipro v General Hospital Corp and Société Zeltiq Aesthetics Inc,13-13050 (12 January 2016), Paris CA�� 304 Société EVINERUDE 10/14406 (3 July 2014), TGI Paris�� 243–244 Société Guy La Roche v 4 Every Ware Stocklots BV ECLI:NL:RBDHA:2016:10887 (14 September 2016), Rechtbank den Haag�� 138 Société Instrumentation Laboratory Spa 05/07419 (21 November 2006), TGI Paris�� 453 Société KONE 2007/20589 (5 June 2009), Paris CA�� 250 Societe Nationale Industrielle Aerospatiale (SNIA) v Lee Kui Jak [1987] AC 871, [1987] 3 WLR 59 (14 May 1987), PC (Brunei).��186, 187 Societe Packetis v Societe Pharmapost, no 08-11.235 (3 March 2009), Cass Com�� 9 Société Robotswim, Sarl v Société Auchan France 16/20760 (3 July 2018), Paris CA�� 216 Société ZA v Société FG, 14/13942 (8 December 2016), TGI Paris �� 216 Software structure/TRILOGY T 1755/10 (unpublished) (6 November 2014)�� 337 Solvay SA v Honeywell Fluorine Products Europe BV and Others Case C-616/10 ECLI:EU:C:2012:445 (12 July 2012), CJEU�� 196, 493, 495, 496, 497, 498, 500, 501, 506, 507, 511 Solvay SA v Honeywell Fluorine Products Europe BV 342164 / HA ZA 09-2275 (22 December 2010), Rechtbank Den Haag�� 195 Sonnenblende II 4 O 377/95 GRUR -Int 1999, 458 (22 September 1998), LG Düsseldorf�� 498 Soparco v Gouaix Plastique 04/12075 (7 September 2006), TGI Paris 3.3�� 108 Sortenschutzrechts, Hohe der Verletzervergutung, I-15 U 21/14 (16 October 2014), OLG Düsseldorf�� 222 South Carolina Insurance Co v Assurantie Maatshappij De Zeven Provincien NV [1987] AC 24, [1986] 3 WLR 398 (29 July 1986), HL�� 186 S.P. et al v Sveaskogs Förvaltning AB NJA 2006, 678, Swedish Sup Ct�� 453 Space-filling miniature antennas/FRACTUS T 667/08 (unpublished) (20 April 2012)�� 305 Spannschraube X ZR 85/96 GRUR 1999 909 (2 March 1999), BGH�� 379 Spiliada Maritime Corp v Cansulex Ltd [1986] UKHL 10, [1987] AC 460 (19 November 1986), HL�� 503 Spiro compounds/ CIBA GEIGY T 181/82 [1984] OJ EPO 401 (28 February 1984)�� 339 SPM SpA v B-Stedt of Sweden AB, case no PMO 6806-17 (29 March 2018), Swedish Patent and Market CA�� 521 SQL extensions/MICROSOFT TECHNOLOGY LICENSING T 0697/17, ECLI:EP:BA:2019:T069717.20191017 (17 October 2019)�� 337 Stable bleaches/UNILEVER T 226/85 [1988] OJ EPO 336 (17 March 1987)�� 355 Stable frozen lactic acid bacteria/CHR. HANSEN T 2277/16 (unpublished) (1 December 2020)�� 277 Starsight v Numericable, docket No 10/08326 (7 June 2013), TGI Paris.�� 246 Starting compounds/MERCK OJ T51/87 [1991] EPO 177, [1991] EPOR 329, [1988] 12 WLUK 94 (8 December 1988)�� 13 Sté EFSA v Gérard CECCHI PIBD 1995 III, 320 (14 April 1995), CA Paris�� 320 Sté Octapharma c/ Assoc (5 April 2000), CA Toulouse, 2e ch�� 74 Sté Octapharma c/ Assoc, 00-15.203 (19 November 2002), Cass com�� 74

Table of Cases lxxi Sté Robert Bosch GmbH v SA ets Guillet PIBD 1996, 602 III 34 (17 October 1995), Cour de Cassation, France�� 8 Sté Technicolor et Thomson Licensing v Ste Vestel, Cass. com. no 14-10.800 (27 May 2015)�� 95 Stena v Irish Ferries [2003] EWCA Civ 66, [2003] RPC 36 (6 February 2003)�� 135 Steroidbeladene Körner 4 O 456/01, BeckRS 2008, 16495 (4 March 2003), LG Düsseldorf�� 513 Steroidbeladene Körner II GRUR -RS 2015, 01826 (8 January 2015), OLG Düsseldorf�� 522 Steuervorrichtung X ZR 79/07 GRUR 2010 817 (18 May 2010), BGH�� 441 Stoβwellen-Lithotripter XZR 115/96 GRUR 1999, 145 (12 May 1998), BGH, Germany��9, 343 Stowarzyszenie ‘Olawska Telewizja Kablowa’ v Stowarzyszenie Filmowcow Polskich C-367/15 ECLI:EU:C:2017:36 (25 January 2017), CJEU�� 222 Streaming to a game console/MICROSOFT T 2172/13 (unpublished) (7 September 2016)�� 336 Streit um Truvada 7 O 11152/17 (17 August 2017), LG München�� 422 Structural Joint / HENGELHOEF T 0179/18 (unpublished) (1 June 2021)�� 345 Styrene-based resin composition/IDEMITSU T 0172/99 (unpublished) (7 March 2002)�� 356 Sudarshan Chemical Industries Ltd v Clariant Produkte (Deutschland) GmbH [2012] EWHC 1569 (Ch), (2012) 109(27) LSG 18 (13 June 2012)�� 93 Sumitomo Chemical Co Ltd v Deutsches Patent und Markenamt C-210/12 ECLI:EU:C:2013:665 (17 October 2013), CJEU�� 429 Sun v Novartis C/09/469148/HA ZA 14-770 (5 April 2017), Gerechtshof Den Haag��116, 118 Suomalaiset Raha-Automaatit Payazzo Finland Oy AB v Easypark AB case no PMT 744-16 (17 November 2016), Swedish Patent and Market CA��35, 41, 59 Superconductive thin film/SUMITOMO T 348/94 (unpublished) (21 October 1998)�� 279 Susan Yvonne Dore v Leicestershire County Council [2010] EWHC 34 (Ch), [2010] 1 WLUK 220(15 Jawnuary 2010).�� 544 Svante Björk Aktiebolag v Semyre Photonic Systems Aktiebolag et al, case no O 569-00 (24 January 2000), Svea CA�� 521 Svante Björk Aktiebolag v Semyre Photonic Systems Aktiebolag, case no T 288-82 (29 April 1986), Stockholm DC�� 514 Swiss Pharma/Biogen C/09/513693/HA ZA 16-773 (12 July 2017), Rechtbank Den Haag�� 322 Symbian Ltd v Comptroller General of Patents [2008] EWCA Civ 1066, [2009] RPC 1 (8 October 2008).�� 249 Syngenta Ltd v INPI 13/23811 (30 May 2014), Paris CA�� 410 Syngenta Participations AG and Novartis AG v INPI, U 1-25.495 (31 January 2012), French Sup Ct�� 415 Synova vs Avonisys et al O2018_004 (14 December 2020), Swiss Federal Pat Ct�� 99 Synthex v Debiopharm [1998] BIE 1999/13 (4 February 1998), Rechtbank Den Haag�� 360 Synthon v Yeda Research & Development C/09/521009 /HA ZA 16-1231 (6 September 2017), Rechtbank Den Haag�� 163–164 Synthon BV v Merz Pharma GmbH & Co KG Case C-195/09 [2011] ECR I-07011 (28 July 2011), CJEU�� 429 Synthon BV v Smithkline Beecham plc [2005] UKHL 59, [2006] RPC 10 (20 October 2005), HL��267, 270–271, 291

lxxii Table of Cases Synthon BV v Teva Pharmaceutical Industries Ltd [2017] EWCA Civ 148, [2017] 3 WLUK 487 (21 March 2017), CA�� 305 Synucleinopathic disease/PROTHENA BIOSCIENCES T0966/18 (unpublished) (10 November 2020)�� 391 System for surveillance/TELEFONAKTIEBOLAGET LM ERICSSON T 149/07 (unpublished) (20 November 2009)�� 14 T 0711/90 (unpublished) (15 September 1993)�� 46 T 15/91 (unreported)�� 43 T-cell growth factor/HOOPER T 877/90 (unpublished) (28 July 1992)��278, 282 TACONIC FARMS Inc v SA CELLECTIS et al., no° 08/17882 (29 June 2010), TGI Paris�� 76 Tadalafil 5mg S2019_007 (1 October 2019), Swiss Fed Pat Ct�� 330 Tadalafil, X ZR 65/18, GRUR 2020 603 (21 January 2020), BGH�� 348–349 Tamglass Ltd Oy v Luoyang North Glass Technology Co Ltd [2006] EWHC 65 (Pat), [2006] FSR 32 (27 January 2006)�� 73 Tape drive and printing apparatus/VIDEOJET T 1727/12 (unpublished) (1 February 2016)�� 363 Taste of Nature Holding BV v Cresco Handels-BV 416501 and 418860 (8 May 2013), Rechtbank Den Haag�� 258 Taxoides/Rhone-Poulenc T 0077/97 (3 July 1997)�� 291 Taxol X ZR 168/97 GRUR 2001 813 (3 May 2001), BGH�� 359 TCL Commc’n Tech Holdings, Ltd v Telefonaktiebolaget LM Ericsson Nos SACV 14-341 JVS(DFMx) and CV 15-2370 JVS (DFMx), 2017 WL 6611635 (CD Cal, 9 March 2018)��183, 184 TCT v Philips, Docket no° 19/02085 (06 February 2020), TJ Paris�� 167 Technetix BV v Teleste Ltd [2019] EWHC 126 (IPEC), [2019] FSR 19 (29 January 2019), Patents Ct��38, 62, 310 Technetix BV v Teleste Ltd [2019] EWHC 3106 (Pat), [2019] 11 WLUK 258 (18 November 2019).�� 305 Techniques for evaluating urinary stress incontinence/PNEUMOFLEX T369/12 (unpublished) (25 May 2016)�� 331 Technogenia 01/0035 and 01.0036 (29 June 2004), TGI Paris�� 50 Technogenia 04.16096 (10 January 2007), Paris CA�� 50 Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 (24 February 1971), HL��7, 328, 347 Telefonaktiebolaget LM Ericsson v Onda Communication Spa (2011), Ct of Trieste�� 179 Telomerase peptides/GEMVAX T 903/05 (unpublished) (30 August 2007)��293, 297, 395–396 TERPAN v Action Solidaire Developpement and others, 17/12393 (6 November 2020), TGI Paris�� 255 Tetra / Meyn 96/1213 (30 September 1999), Gerechtshof Den Haag�� 340 Teva v Eli Lilly, 09/12706 (20 March 2012), TGI Paris�� 394 Teva v Eli Lily, 12/07203 (12 March 2014), CA Paris�� 393 Teva v Merck 15-19.726 (6 December 2017) (Finasteride), Cass Com�� 374 Teva v MSD, 15-19726 (6 December 2017), Cass Com��394, 408 Teva v Novartis, RG no° 16/15196 (7 June 2018), TGI Paris�� 228 TEVA v Novartis, 16/15196 (7 June 2018), TGI Paris, ord JME 3.1��132, 193 Teva and others v Sepracor Inc, 07/16446 (6 October 2009), TGI Paris�� 388, 393, 394

Table of Cases lxxiii Teva Pharmaceuticals Europe bv v Icos corp ECLI:NL:RBDHA:2018:2668 (14 March 2018), Rechtbank Den Haag; confirmed ECLI:NL:RBDHA: 2018:2668 (27 August 2019), CA�� 349 Teva Sweden Aktiebolag v Boehringer Ingelheim Pharma GmbH & Co KG, case no PMT 5945-18 (31 January 2020), Swedish Patent and Market Ct CA�� 389 Teva UK Ltd v Astrazeneca AB [2014] EWHC 2873 (Pat), (2015) 142 BMLR 94 (2 September 2014), Pat Ct�� 15 Teva UK Ltd v Chiesi Farmaceutici SpA [2020] EWHC 1311 (Pat), [2020] 5 CMLR 14, [2021] FSR 11 (02 June 2020)�� 209 Teva UK Ltd v Gilead Sciences Inc C-121/17 ECLI:EU:C:2018:278 (25 April 2018), Ad-Gen’s Opinion��420, 421 Teva UK Ltd v Gilead Sciences Inc (Truvada) C-121/17 ECLI:EU:C:2018:585 (25 July 2018), CJEU��418, 419–420, 421, 424, 426, 427, 438 Teva UK Ltd v Leo Pharma A/S [2015] EWCA Civ 779, [2016] RPC 5 (28 July 2015).�� 325–326 Teva UK Ltd v Merck & Co Inc [2009] EWHC 2952 (Pat), [2010] FSR 17 (20 November 2009)�� 17 Teva/Icos C/09/532013/HA ZA 17-488 (14 March 2018), Rechtbank Den Haag�� 322 TGFalpha-HII/HUMAN GENOME SCIENCES T 1450/07 (unpublished) (11 February 2009)�� 239 TGI Lyon, 10th ch., 14 Feb. 2008, No 04/08417�� 112 TGI Paris 4702/84 (25 April 1984, confirmed 11 May 1987), Paris CA�� 454 TGI Paris 00/13122 (28 May 2002)�� 455 TGI Paris (15 December 1999)�� 452 TGI Paris, 3.3, 2012/13507 (5 December 2014)�� 8 TGI Paris, May 18, 2017, no 14/15459�� 8 TGI Paris, 3e ch, (5 March 1985): PI BD 1985, no° 372, III, 199�� 72 TGI Paris, 3rd ch., 31 October 1991: PI BD 1992, no° 518, III, 169�� 74 TGI Paris (16 May 1990): PI BD 1990, no° 485, III, 539�� 72 TGI Paris, (4 July 1997), PI BD 1997, no 644, III, 639�� 77 TGI Paris, (28 February 2001), PI BD 2001, no°730, III, 561�� 77 TGI Paris 15/06627 (5 October 2017)�� 379 Thaler v Comptroller-General of Patents, Designs And Trade Marks [2021] EWCA Civ 1374, [2022] Bus LR 375 (21 September 2021)�� 441 The General Hospital Corp and Palomar Medical Technologies Inc v Asclepion Laser Technologies GmbH 14508 (10 June 2013), Corte Suprema di Cassazione, Italy��502, 507 The General Hospital Corp (Ste, Etats-Unis) et Epix Medical Inc (Ste, Etats-Unis) v Laboratoires Byk France (Sa) Et Bracco Spa (Ste, Italie) (28 April 2000), TJ Paris�� 505 The Home Store I ZR 33/05 GRUR 2008 254 (13 September 2007), BGH�� 498 Therapeutic method/ELA MEDICAL T 789/96 [2002] OJ EPO 364 (23 August 2001)�� 260 Thickness of magnetic layers/TOSHIBA T 26/85 [1990] OJ EPO 22 (20 September 1988)�� 290 Thiochloroformates/HOECHST T 198/84 [1985] OJ EPO 209 (28 February 1985)�� 288, 289, 290 Thoratec Europe Ltd v Ais GmbH Aachen Innovative Solutions [2016] EWHC 2637 (Pat), [2016] 10 WLUK 671 (28 October 2016)�� 346 3M / Avery 253070 / HA ZA 05-3435 (25 April 2007), Rechtbank Den Haag�� 346

lxxiv Table of Cases Three Rivers DC v Bank of England [2004] UKHL 48, [2004] 3 WLR 1274 (11 November 2004)�� 542 Three Rivers DC v Bank of England (No 5) [2003] EWCA Civ 474, [2003] QB 1556 (1 March 2004)�� 542 Thrombozyten-Zahlung X ZR 53/83 GRUR 1986 372 (19 December 1985), BGH��268, 279 Thule Sweden AB v Mont Blanc Industri AB, case no T 16320-10 (15 May 2013), Stockholm Dist Ct��219, 220 Thule Sweden AB v Mont Blanc Industri AB, case no T 16320-10 (22 November 2012), Stockholm Dist Ct�� 197 Thur & Uretek v Temsol 17/00427 (24 May 2018), TGI Paris��69, 285 Tigecycline crystalline forms/TEVA T 1422/12 (unpublished) (11 April 2013)�� 398 Time limit for appeal/BEHR T 389/86 [1988] OJ EPO 87 (31 March 1987)��318, 339 Tissue France v Global Hygiene P. 15-29.378 (8 June 2017), Cass Com�� 105 TNF-alpha inhibitor T 734/12 (unpublished) (17 May 2013).�� 301–302 TNO v Ter Meulen NJ 2003 210 (1 March 2002), Hoge Raad�� 450 Tobler v Vijator Schweiz, S2021_003 (15 September 2021), Swiss Fed Pat Ct�� 198 Tomatoes II G 2/12 and Broccoli II G 2/13 [2016] OJ EPO A28 (25 March 2015)�� 258 Tough composition for food applications/BOREALIS T 1833/14 (unpublished) (7 December 2017)�� 280 Toulouse Court of Appeal, 2nd Chamber, docket No 09/00799 (26 January 2011)�� 283 TQ Delta LLC v Zyxel Communications UK Ltd [2018] EWHC 1515 (Ch), [2018] FSR 34 (13 June 2018)�� 539 TQ Delta LLC v ZyXEL Communications Ltd [2019] EWHC 745 (Pat), [2019] 3 WLUK 483 (18 March 2019), Pat Ct��174–175, 211–212 TQ Delta, LLC v ZyXEL Communications Ltd [2019] EWHC 562 (Ch), [2019] 3 WLUK 158 (11 March 2019), ChD (Pat Ct)��156, 175 Transdermal therapeutic system/ LTS LOHMANN T 2306/12 (unpublished) (12 July 2016)�� 377 Transformed coding/ORANGE T 2517/11 (unpublished) (12 October 2016)�� 317 Transformer with high-temperature superconductor for locomotives/ALSTOM T 1173/00 [2004] OJ EPO 16 (5 June 2003)�� 363 Transgenic animals/HARVARD T 315/03 [2005] OJ EPO 246 (6 July 2004)��254, 255, 257, 258 Transgenic cotton plants/BAYER CRO PSCIENCE T 547/10 (unpublished) (13 July 2016)�� 257 Transgenic plant/NOVARTIS II EPO G1/98 [2000] OJ EPO 111 (20 December 1999)�� 257 Transitwaren X ZR 72/13 GRUR 2014, 1189 (25 June 2014), BGH�� 537 Treatment by surgery/MEDI-PHYSICS G 1/07 [2011] OJ EPO 134, [2010] EPOR 25 (15 February 2010)�� 259–260, 263 Triazinylaminostilbene/CIBA T 392/06 (unpublished) (22 October 2008)�� 287 Triazoles/AGREVO T 939/92 [1996] EPOR 171 (12 September 1995)�� 328, 352, 384, 385, 386, 388, 405, 406, 407 Triazoles/AGREVO T 939/92 [1996] OJ EPO 309 (12 September 1995)��14, 315, 316, 319, 370, 374 Tribunal Supremo de Espana 263/2017 (3 May 2017), Spain��229, 314 Tribunale di Milano (PI), 5 January 2012�� 194

Table of Cases lxxv Tribunale di Milano, 12 February 2014�� 13 Tribunale di Milano (PI), 20 July 2016�� 202 Tribunale di Milano (PI), 15 October 2018 No 45209��32, 56 Tribunale di Milano, 21 June 2021 No 5312�� 329 Tribunale di Torino (PI), 16 June 2021�� 194 Trigonellin X ZR 177/98 GRUR 2001, 730 (20 March 2001), BGH�� 78 Trittpaneel 9 W (pat) 2/20 GRUR -RS 2020, 42496 (30 N2020).�� 344 Trommeleinheit Case X ZR 57/16, BGH�� 70 Trommeleinheit X ZR 55/16 GRUR 2018 170 (24 October 2017), BGH��71, 139 Truvada X ZR 172/18 GRUR 2021, 42 (22 September 2020), BGH�� 422 Truvada-Schutzzertifikat 4 Ni 12/17 (15 May 2018), BPatG�� 422 Turner v Grovit (Reference to ECJ) [2001] UKHL 65, [2002] 1 WLR 107 (13 December 2001)�� 186 Two identities/COMVIK T 641/00 [2003] OJ EPO 352 (26 September 2002)��335, 337 UHF-Empfänger II Ia ZB 19/65 GRUR 1967 477 (26 January 1967), BGH�� 442 Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd, Eurocell Profiles Ltd [2004] EWHC 1785 (Ch), [2005] RPC 7, (2004) 27(10) IPD 27081 (22 July 2004).�� 47 Ultrahigh-molecularweight polyethylene/MITSUI T 176/89 (unpublished) (27 June 1990)�� 317 Umicore v Nanomakers, 19/04143 (7 April 2021), TJ Paris 3.2��40–41 Unberechtigte Schutzrechtsverwarnung I GSZ 1/04 NJW 2005, 3141 (15 July 2005), BGH ��96 Unberechtigte Schutzrechtsverwarnung II X ZR 170/12 GRUR 2016, 630 (1 December 2015), BGH��65, 97 Unberechtigte Schutzrechtsverwarnung III X ZR 42/17 GRUR 2020, 1116 (7 July 2020), BGH��96, 97 Undeliverable mail/PITNEY BOWES T 388/04 [2007] OJ EPO 16 (22 March 2006)�� 243 Unilever Plc v Chefaro Proprietaries Ltd [1994] FSR 135 (11 March 1993), CA�� 118 Unilever plc v Procter & Gamble Co [2000] 1 WLR 2436, [2000] RPC 344, [2000] FSR 344, (28 October 1999), CA�� 154 Unilever/Detergents T 435/91��356, 366 Unilin Beheer BV v Berry Floor NV [2004] EWCA Civ 1021, [2005] FSR 6 (30 July 2004)�� 292 Unilin Beheer BV v Berry Floor NV [2007] EWCA Civ 364, [2008] 1 All ER 156, [2007] FSR 25 (25 April 2007)�� 487 Union & Laboratories Servier v AJC Pharma (25 January 2002), TGI Paris�� 126 Union Carbide Corpn v BP Chemicals Ltd [1998] FSR 1 (28 April 1997), ChD (Pat Ct)�� 66 UNION CARBIDE/High tear strength polymers T-396/89 [1992] EPOR 312 (8 August 1991), EPO (TBA)��271, 277 United Video Properties Inc v Telenet NV (Case C-57/15), ECLI:EU:C:2016:611, (28 July 2016), CJEU�� 231 United Wire Ltd v Screen Repair Services (Scotland) Ltd [2000] UKHL 42, [2001] RPC 24 (20 July, 2000).��71, 457, 482 University of Queensland, CSL Ltd v Comptroller General of Patents, Designs and Trade Marks Case C-630/10 [2011] ECR I-12231 (25 November 2011), CJEU�� 410, 416, 417, 427 University of Southampton’s Applications [2004] EWHC 2107 (Pat), [2005] RPC 220 (28 July 2004)�� 270

lxxvi Table of Cases Unwired Planet v Huawei, I-2 U 31/16 (6 June 2019), OLG Düsseldorf�� 177 Unwired Planet International Ltd v Huawei Technologies Co Ltd [2015] EWHC 2097 (Pat), [2015] Info TLR 95 (21 July 2015)�� 230 Unwired Planet International Ltd v Huawei Technologies Co Ltd and Samsung Electronics Co Ltd [2016] EWHC 576 (Pat), [2016] 3 WLUK 595 (22 March 2016)�� 378, 379 Unwired Planet International Ltd v Huawei, Samsung and Google [2015] EWHC 3366 (Pat), [2016] Bus LR 435 (23 November 2015)��292, 311 Unwired Planet International Ltd v Huawei Technologies Co Ltd [2017] EWHC 711 (Pat), [2019] 4 CMLR 7 (5 April 2017), Pat Ct�� 171–172 Unwired Planet International Ltd v Huawei Technologies Co Ltd & Anor [2017] EWHC 1304 (Pat), [2017] RPC 20 (7 June 2017)��173, 180, 181, 182, 183 Unwired Planet International Ltd v Huawei Technologies Co Ltd [2018] EWCA Civ 2344, [2018] RPC 20 (23 October 2018)�� 168,172, 180, 187, 505–506 Unwired Planet International Ltd & Anor v Huawei Technologies (UK) Co Ltd & Anor [2020] UKSC 37, [2020] Bus LR 2422, [2020] RPC 21, [2021] 1 All ER 1141 (26 August 2020)��172–173, 174, 175, 181, 187, 188, 506 Unwirksame Aufrechnungsvereinbarungen fur Insolvenzfall bei Optionsgeschäften IX ZR 314/14 NJW 2016, 2328 (9 September 2016), BGH�� 527 UPC Telekabel Wien GmbH v Constantin Film Verleih GmbH Case C-314/12 ECLI:EU:C:2014:192, (26 November 2013), CJEU�� 210 Urinal valve BGE 142 III 772 (3 October 2016), Swiss Fed Sup Ct�� 37 USA v Philip Morris Inc and British American Tobacco (Investments) Ltd [2001] 1 CLC 811�� 543 Use of embryos/WARF G 2/06 [2009] OJ EPO 306, [2009] EPOR 15, (25 November 2008)�� 255, 256, 264 Use of reactive, organic fillers/BAYER T 123/82 (unpublished) (30 August 1985)�� 267 UV-unempfindliche Druckplatte X ZR 3/10 GRUR 2012 1133 (14 August 2012), BGH�� 293 Viiv v Sandoz – Abacavir Lamivudin S2018_004 (22 October 2018), Swiss Fed Pat Ct�� 203 ViiV Healthcare UK Ltd v Sandoz A/S, case no PMO 3565-17 (30 June 2017), Swedish Patent and Market CA��196, 197 VIIV Healthcare Co & Ors v Gilead Sciences & Ors [2020] EWHC 615 (Pat), [2020] Bus LR 878, [2021] RPC 4 (10 March 2020)�� 27 Vaccines/GENENTECH T 187/93 (unpublished) (5 March 1997)�� 324 Vacuum carbo-nitriding method/KOYO THERMAL SYSTEMS T 428/13 (unpublished) (19 September 2017)�� 279 Valensi v British Radio Corp Ltd (No 1) [1973] RPC 337, [1972] FSR 273 (18 May 1972), CA��271, 368 Valeo Service v Qeep Auto Spare Parts, 13/15800 (14 April 2015), Paris CA�� 105 Valorem c Urba Waste 12/05288 (2 May 2014) TGI Paris�� 143 Valorom v Landre (22 March 2006), TGI Paris, 3.1�� 126 Valsartan/Amlodipin S2017_001 (1 June 2017), Switzerland�� 330 Van Bentum/Kool NJ 2002/530 (29 March 2002) Hoge Raad, Netherlands�� 33 Van Diepen/Pronk 298589 / HA ZA 07-3506 (2 July 2008), Rechtbank Den Haag�� 339 Verfahren und Vorrichtung zur Bestimmung der Veranderung eines Objektes/BrainLAB T 923/08 (unpublished) (2 August 2011)�� 260

Table of Cases lxxvii Verfahren zum Herstellen von Gipsbauteilen/ KOSSATZ T 397/87 (unpublished) (31 January 1989)�� 9 Verfahren zum Vorabspeichern von Computernetzwerk-Information 17 W (pat) 1/02, GRUR 2003, 323 (17 October 2002) BpatG�� 286 Vermehrungsgut/CIBA GEIGY T 49/83 [1984] OJ EPO 112 (26 July 1983)�� 257 Vernichtungsanspruch I ZR 242/94 GRUR 1997 899 (10 April 1997), BGH�� 228 Vestel Elektronik Sanayi Ve Ticaret AS & Anor v Access Advance LLC & Anor [2021] EWCA Civ 440, [2021] 4 WLR 60 (26 March 2021)��174, 506 Vetrotech v Interver 07/12696 (25 March 2009), TGI Paris�� 50 Vetrotech v Interver 09-24271 (29 June 2004), Paris CA�� 50 Vetrotech v Interver 11-26.361 (12 February 2013), Cour de Cassation�� 50 Video game/KONAMI T 928/03 (unpublished) (2 June 2006)�� 246 Videosignal-Codierung I 4b O 508/05 (30 November 2006), LG Düsseldorf��74, 75 Vinylchlorid resins/SUMITOMO T 14/83 [1984] OJ EPO 105 (7 June 1983)��354, 360 Virbac v Merial 13/00455 (13 February 2014), TGI Paris��359, 378 Virgin Atlantic Airways Ltd v Delta Airways Inc [2010] EWHC 3094 (Pat), [2011] RPC 8 (30 November 2010)�� 73 Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group Ltd [2009] EWCA Civ 1062, [2010] RPC 8 (22 October 2009).��23, 24 Virgin Atlantic Airways Ltd (Respondent) v Zodiac Seats UK Ltd (formerly known as Contour Aerospace Ltd) [2013] UKSC 46, [2014] AC 160, [2013] RPC 29 (3 July 2013)�� 487 Vision Sciences Inc v Xmed Srl 13/14830 (10 July 2015), TGI Paris, confirmed on the assessment of the novelty by Paris CA, Vision Sciences Inc v Xmed Srl 15/16413 (16 February 2018)�� 268 Visual prosthesis/JOHNS HOPKINS UNIVERSITY T 1798/08 (unpublished) (21 August 2012)��43, 260 Visualisation/COUNTERFLO T 0694/15 (unpublished) (4 June 2020)�� 316 Vittorio Arduino v Officine Faema, 24 October 1958, No 3443, Ct of Cassation, Italy��30, 31 von Arx v Klauke – Hydraulic Press Device O2013_006 (7 October 2015), Dutch Fed Pat Ct�� 281 Vorrichtung zum Verbinden von Bauteilen, X ZR 108/16 (31 July 2018), BGH�� 293 Vringo Infrastructure Inc v ZTE (UK) Ltd [2013] EWHC 1591 (Pat) (6 June 2013)�� 172 VSY v ZEISS C/09/513279 / HA ZA 16-741 (7 June 2017), Rechtbank Den Haag�� 497 Wall element/VEREINIGTE METALLWERKE T 169/83 [1985] OJ EPO 193 (25 March 1985)�� 354 Warenregal 166/97 (29 February 2000), BGH�� 15 Warner Lambert and Pfizer v Sandoz, Mylan, Teva, Sanofi, Biogaran (2 December 2016), (Pregabalin Case) TGI Paris�� 85 Warner-Lambert Co LLC v Laboratoires Cinfa SA (unreported) (5 July 2016), Barcelona CA�� 81 Warner-Lambert / Ranbaxy 07/272 (28 February 2008), Gerechtshof Den Haag�� 340 Warners Lambert Co LLC v Mylan & Actavis (pregabalin UK) [2018] UKSC 56, [2018] RPC 21, [2019] Bus LR 360 (14 November 2018), SC�� 80, 81–84, 101, 122, 370–374, 399–401, 407 Warner-Lambert Co LLC v Actavis Group PTC EHF [2015] EWHC 249 (Pat), [2015] 2 WLUK 217, (6 February 2015)�� 113

lxxviii Table of Cases Warner-Lambert Co LLC v Actavis Group PTC EHF [2015] EWHC 2548 (Pat); sub nom Generics (UK) Ltd t/a Mylan) v Warner-Lambert Company LLC [2016] RPC 3 (10 September 2015)��116, 399 Warner-Lambert Co LLC o.a. v Krka, case A-6-15 (25 June 2015), Danish Maritime and Commercial High Ct�� 80 Warner Lambert and Pfizer v Sandoz (pregabaline) 15/58725 (26 October 2015), TGI Paris��69, 84 Washing Composition/UNILEVER T 666/89 [1993] OJ EPO 495 (10 September 1991)�� 277, 286, 290 Waters v Hewlett-Packard GmbH and Agilent technologies 97/20725 (14 January 2009), TGI Paris�� 216 Waters v Hewlett-Packard GmbH and Agilent technologies 09/02423 (5 October 2011), CA�� 216 Waugh v British Railways Board [1980] AC 521, [1979] 3 WLR 150 (12 July 1979), HL�� 544 Webseitenanzeige X ZR 121/09 GRUR 2011, 15 (24 February 2011), BGH�� 251 Wegwerfwindel, BGE 120 II 71 para 2 (8 February 1994), Fed Sup Ct, Switzerland�� 8 Wellcome Foundation v Parexel International and Flamel (27 January 1999), Paris CA�� 126 Wellcome Foundation v Parexel International and Flamel (20 February 2001), TGI Paris�� 126 Wheatley v Drillsafe Ltd [2000] EWCA Civ 209, [2001] RPC 7 (5 July 2000).�� 24 Whirlpool v BSH Bosch (PI), 17 May 2000, Tribunale di Torino�� 501 Whirlpool v Samsung, 12/59160 (22 February 2013), TGI Paris�� 389 Widerstandsschwei.vorrichtung X ZR 107/05 BeckRS 2009, 23384 (30 June 2009), BGH�� 9 Wiko v Sisvel, docket No 2016F01637 (20 September 2016), TC Marseille�� 176 Wildverbissverhinderung X ZR 54/67 GRUR 1971 210 (10 November 1970), BGH�� 441 Williams v Nye (1890) 7 RPC 62, CA�� 346 Wind energy system/WOBBEN T 0064/13 (unpublished) (17 May 2017)��285, 512 Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59, (31 January 1984), CA�� 273, 313, 318, 319, 328, 333–334, 351, 352 Wyeth LLC v Merck Sharp & Dohme (UK) Ltd [2021] EWCA Civ 1099, [2021] 7 WLUK 337 (22 July 2021)�� 312 Wyeth LLC and The General Hospital Corp v INPI 19/19410 (9 February 2021), Paris CA.�� 419 X v Nouvelle Eurocable 93-12212 (7 February 1995), Cour de Cassation�� 466 X v Y 04-19482 (25 April 2006), Cass Com; confirmed 11/03021 (29 May 2013), Paris CA�� 444 X v Y 08-70138 (2 June 2010), Cass Com�� 445 Xaga v SELARL Debois-Herbaut 13/11351 (18 November 2016), TGI Paris�� 250 Xanthines/DRACO T 7/86 [1988] OJ EPO 381 (16 September 1987)�� 288 Xiaomi v ETSI, Philips, docket No 20/12558 (07 December 2021), TJ Paris��176, 189 Xiaomi Communication Technology Co Ltd v Interdigital Inc (23 September 2020), Wuhan Intermediate People’s Ct�� 188 Y v Dexcel and X 99-11183 (18 December 2001), Cour de Cassation�� 453 Y v Télécom Design and Info Networks Systems 16-13262 (31 January 2018), Cass Com�� 449

Table of Cases lxxix Yamanouchi Pharmaceutical v BIOGEN INC. Docket no 98/11550 (16 March 1999), TGI Paris, 3.3��154, 155 Yeda Research & Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc [2007] UKHL 43, [2008] RPC 1 (24 October 2007)��443, 464 Yeda Research and Development Co and Aventis Holdings C-518/10, [2011] ECR-I-12209, ECJ�� 417 Yissum Research and Development Co of the Hebrew University of Jerusalem v Comptroller-General of Patents Case C-202/05 [2007] ECR-I-2839 (17 April 2007), ECJ.�� 411 Ziehmaschinenzugeinheit II X ZR 49/09 GRUR 2010 992 (29 June 2010), BGH�� 342 Zipher Ltd v Markem Systems Ltd [2008] EWHC 1379 (Pat), [2009] FSR 1 (25 June 2008)�� 368 Zuid-Chemie BV v Philippo’s Mineralenfabriek NV/SA2 Case C-189/08 [2009] ECR I-6917 (16 July 2009), ECJ�� 491 Zwangsmischer 7 O 22100/10 (24 November 2011), LG München�� 229 Zyklon-Abscheidevorrichtung 7 O 10517/20 GRUR -RS 2020, 2977 (1 October 2020), Munich Regional Ct�� 96

lxxx

TABLE OF EU AND INTERNATIONAL MATERIAL References are to page number Act of Accession 2003�� 434 Annex IV, Chap 2�� 139 Act of Accession 2005�� 434 Act of Accession 2012�� 434 Agreement on a Unified Patent Court OJ 2013/C 175/01 (UPC Agreement)��5, 18, 102, 148, 149, 150, 233, 234, 235, 237,479, 508 preamble�� 508 Art 1�� 508 Art 21�� 508 Art 24(1)��61, 264, 309, 351, 380 Art 24(1)(c)��61, 264, 309, 351, 380 Art 24(1)(e)��99, 120, 148 Art 25�� 99 Art 26��99, 120, 121, 122, 234 Art 26(1), (2)�� 120 Art 27��99, 147, 148 Art 27(a)–(c)�� 147 Art 27(d)�� 147, 148, 151 Art 27(e)–(l)�� 148 Art 27(k), (l)�� 147 Art 28�� 149, 479, 483, 484 Art 29�� 150 Art 32�� 102, 165, 190 Art 32(1)(a)�� 482 Art 32(1)(b)�� 165 Art 32(1)(d)�� 166 Art 32(1)(g)�� 483 Art 34�� 234 Art 45�� 546 Art 58��546, 547 Arts 59–62�� 237 Art 60(2)�� 547 Art 62�� 232 Art 63(1)�� 234

lxxxii Table of EU and International Material Art 64�� 236 Art 64(1)–(4)�� 236 Art 68��235, 236 Art 69(1)–(4)�� 237 Art 80�� 237 Art 83�� 508 Art 83(3)�� 508 Art 89(1)�� 508 Annex I Art 38(2)�� 437 Agreement on the European Economic Area, [1994] OJ L 001/3, 1 January 1994�� 137, 457, 469 Agreement relating to Community Patents (Community Patent Convention 1989) 89/695/EEC [1989] OJ L 401/1, 30 December 1989�� 2, 64, 99, 103, 110, 116, 123, 147, 149 Art 25�� 64, 65, 103, 123 Art 25(a)�� 64, 67, 68, 70, 73, 84 Art 25(b)��64, 73, 74 Art 25(c)�� 64, 74, 76, 81, 100 Art 26��103, 107, 109, 110, 113, 114, 120, 121, 122, 123 Art 26(1)�� 103 Art 26(2)��103, 110 Art 27�� 123, 135, 147 Art 27(a)�� 135 Art 27(d)–(f)�� 135 Art 28�� 123 Art 31(b)�� 128 Art 32(1)��220, 221 Art 32(2)–(4)�� 220 Art 35��76, 513 Art 37��123, 142 Art 37(1), (2)�� 142 Art 76�� 149 Brussels Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters 1968�� 491 Art 6(1)�� 494 Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure of 28 April 1977�� 369 COM(90) 101 final-SYN 225, 25�� 429 COM(2017) 712 final, 29 November 2017 Setting out the EU approach to Standard Essential Patent (Communication), Commission 169COM (2020) 760 Final ‘Making the most of the EU’s innovative potential –An intellectual property action plan to support the EU’s recovery and resilience’�� 438 Communication from the Commission to the Institutions on Guidance on certain aspects of Directive 2004/48/EC of the European Parliament and of the Council on the enforcement of intellectual property rights (‘Guidance Communication’)��191, 210, 217, 221

Table of EU and International Material lxxxiii Communication from the Commission – Guidelines on the applicability of Article 101 of the Treaty on the Functioning of the European Union to horizontal co-operation agreements [2011] OJ C11/1�� 181 Convention for the European Patent for the Common Market (Community Patent Convention 1973) 76/76 EEC [1976] OJ L17/1, 26 January 1976��2, 5, 103 Convention on International Civil Aviation of 7 December 1944 ‘Chicago Convention’, Document 7300/9 Art 27��135, 148 Council Directive 65/65/EEC of 26 January 1965 on the approximation of provisions laid down by Law, Regulation or Administrative Action relating to proprietary medicinal products [1965] OJ 22/369�� 429 Directive 93/42/EEC of 14 June 1993 concerning medical devices [1993] OJ L169/1�� 429 Annex I, section 7.4 para 1�� 429 Directive 98/44/EC of 6 July 1998 on the legal protection of biotechnological inventions – Biotechnology Directive [1998] OJ L 213/13�� 3, 92, 140, 238, 241, 252, 253, 254, 257, 258, 263, 265, 395 Recital (16)��256, 263 Recital (42)��256, 264 Art 3�� 252 Art 3(i)�� 252 Art 3(ii)��252, 254 Art 4(1)�� 252, 257, 258 Art 5��252, 254 Art 6�� 253 Art 6(1)��253, 254 Art 6(1)(a)�� 254 Art 6(2)�� 253 Art 6(2)(a)–(d)�� 253 Art 6(2)(c)�� 255, 256, 263 Art 9�� 92 Art 10��147, 148 Art 12�� 141 Art 13�� 253 Art 14�� 253 Directive 2001/82/EC of the European Parliament and of the Council of 6 November 2001 on the Community code relating to veterinary medicinal products [2001] OJ L 311/1�� 151, 410, 428 Art 13(1)–(5)�� 130, 132, 148 Art 13(6)�� 147, 148, 151 Directive 2001/83/EC of 6 November 2001 on the Community code relating to medicinal products for human use – Medicines Directive [2001] OJ L 311/67�� 129, 148, 151, 410, 428, 429 Art 10�� 79 Art 10(1)–(4)�� 129, 130, 132, 133 Art 10(6)��123, 129, 133, 147, 148, 151

lxxxiv Table of EU and International Material Art 11��79, 84 Art 28(4)�� 432 Directive 2004/27/EC of the European Parliament and of the Council of 31 March 2004 amending, as regards traditional herbal medicinal products, Directive 2001/83/EC on the Community code relating to medicinal products for human use [2004] OJ L 136/34�� 133 Directive 2004/28/EC of the European Parliament and of the Council of 31 March 2004 amending Directive 2001/82/EC on the Community code relating to veterinary medicinal products [2004] OJ L 136/58�� 133 Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (Enforcement Directive) [2004] OJ L 157/45��191, 197, 202, 204, 205, 210, 217, 218, 222, 223, 227, 228, 229, 230, 235, 236, 237, 512, 520 Recital (7)�� 191 Recital (26)�� 217, 218, 221 Recital (27)�� 229 Art 2(1)�� 223 Art 3(2)�� 205, 210, 211 Arts 6, 7�� 519 Art 9(7)�� 204, 205, 206, 207 Art 10��227, 229 Art 11�� 210 Art 11(1), (2)�� 210 Art 11(3)�� 234 Art 12�� 210 Art 13��191, 217, 218, 222, 235 Art 13(1)(a)�� 217, 218, 222 Art 13(1)(b)�� 217, 221, 222 Art 13(2)��146, 217 Art 14��231, 237 Art 15�� 229 Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the legal protection of computer programs [2009] OJ L 111/16 Arts 5, 6��147, 148 Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure [2016] OJ L 157/1�� 538, 540, 546 Art 9(2)��538, 546 EU-UK Trade and Cooperation Treaty (signed 24 December 2020) IP.33.2�� 438–439 Guidelines for Examination in the EPO��18, 366 4.7.1., March 2021 edition�� 42 Part B Definitions�� 9 Part F F III 9, March 2021��356, 365 F-IV, 4.9, March 2021�� 45

Table of EU and International Material lxxxv F-IV, 4.12, March 2021�� 44 F-IV 4.12.1�� 297 F-IV, 4.20, March 2021�� 46 F-VI 1.5, March 2021�� 294 Part G Patentability G II-28, November 2018�� 263 G-II 3.3.1, March 2021�� 244 G II, 3.7 March 2021�� 245 G II 5.6.1.7�� 297 G-IV-1, March 2021��266, 267 G-IV-5.1.1, March 2021�� 274 G-IV-5.2, March 2021�� 274 G-VI-3, March 2021�� 274 G-VI-7.1, March 2021��78, 298 G-VII-3, March 2021�� 8 G-VII-4, March 2021�� 312 G-VII-5, March 2021��314, 323 G-VII 5, November 2018�� 331 G-VII-5.2, March 2021��315, 317 G-VII-5.3, March 2021�� 324 G-VII-10.2, March 2021�� 345 G-VII 13�� 325 Part H H VI 1, March 2021�� 305 Index for Computer-Implemented Inventions, March 2021�� 247 EPO notice [2009] OJ EPO 8–9, 456��285, 286 European Patent Convention of 5 October 1973��261, 300 Art 52(4)�� 262 Art 54(5)�� 262 European Patent Convention of 5 October 1973 as revised by the Act revising Article 63 EPC of 17 December 1991 and the Act revising the EPC of 29 November 2000�� 2, 3, 4, 7, 12, 21, 22, 27, 38, 43, 61, 78, 79, 81, 84, 86, 88, 101, 112, 113, 115, 116, 117, 118, 122, 157, 160, 241, 250, 251, 252, 257, 259, 261, 262, 263, 264, 265, 266, 268, 269, 274, 275, 276, 288, 299, 309, 351, 360, 366, 375, 380, 388, 407, 440, 441, 480, 486, 511 Pt 2, Ch IV The European patent application as an object of property (Arts 71–74)�� 480 Art 6(1)��253, 479 Art 31�� 298 Art 35(b)�� 258 Art 42(1)(f)�� 239 Art 43(1)(b)�� 46 Arts 52–57�� 307

lxxxvi Table of EU and International Material Art 52��250, 251 Art 52(1)�� 238 Art 52(2)��238, 242, 243, 247, 264 Art 52(2)(a)�� 242, 243, 252 Art 52(2)(b)�� 242 Art 52(2)(c)�� 242, 246, 247 Art 52(2)(d)�� 242 Art 52(3)��242, 247 Art 53��238, 253 Art 53(a)�� 253, 254, 255, 257 Art 53(b)��252, 253, 257, 258, 259 Art 53(c)��253, 259, 260, 261, 262, 263, 264, 298 Art 54��266, 267, 268, 269, 275, 286, 309, 407 Art 54(1)�� 266 Art 54(2)��266, 274, 275, 280, 286, 307 Art 54(3)�� 266, 274, 307 Art 54(4)��118, 261, 262, 263, 266, 307 Art 54(5)��78, 112, 115, 261, 262, 266, 298, 299, 301 Art 55��275, 276 Art 55(1)�� 275 Art 55(1)(a)��275, 279 Art 55(1)(b)�� 275 Art 55(2)�� 275 Art 56��8, 19, 62, 312, 315, 318, 319, 320, 321, 322, 324, 352, 353, 387, 390, 397, 403, 405, 406, 407 Art 57�� 238, 239, 240, 241, 242, 254, 264, 395, 407 Art 60(1)�� 57 Art 64(3)�� 272 Art 69��20, 22, 23, 27, 35, 57, 61, 118, 272, 418, 420, 421 Art 69(1)�� 20, 21, 61, 272, 308 Arts 71–74�� 480 Art 71�� 480 Art 73�� 480 Art 74�� 480 Art 78�� 274 Art 83��354, 355, 356, 357, 358, 359, 360, 361, 363, 366, 369, 377, 378, 380, 391, 402, 403, 405, 406, 407, 408 Art 84��45, 307, 319, 354, 360, 377, 378, 385, 406 Art 87�� 292 Art 87(1)��291, 292 Art 88(2)–(3)�� 294

Table of EU and International Material lxxxvii Art 88(4)�� 292 Art 99(1)�� 485 Art 100(b)�� 354 Art 105a(1), (2)�� 486 Art 123�� 54 Art 123(2)�� 39, 40, 52, 54, 56, 57, 304, 305, 306, 307 Art 123(3)�� 272, 304, 305, 307 Art 128(2)�� 369 Art 138�� 354, 360, 377, 378 Art 138(1)(b)�� 360 Art 153�� 274 Art 164�� 480 Implementing Regulations to the Convention on the Grant of European Patents r 22�� 480 r 25�� 275 r 26(1)�� 263 r 26(3)�� 369 r 26(5), (6)�� 257 r 27�� 258 r 28��253, 258 r 28(1)(c)�� 255 r 28(1)(d)�� 254 r 28(2)�� 253, 257, 258, 259 r 29(1)–(3)�� 252 r 31(1)(a)–(c)�� 369 r 32�� 369 r 33�� 369 r 33(6)�� 369 r 42(1)(c)�� 317 r 56(3)��305, 306 r 58�� 305 r 85�� 480 r 159(1)(c)�� 274 r 159(1)(h)�� 275 r 165�� 274 Protocol on Jurisdiction and the Recognition of Decisions in Respect of the Right to the Grant of a European Patent of 5 October 1973��440, 480–481, 482 Arts 2–6�� 481 Art 6�� 440 Hague Convention on Civil Procedure 17 July 1905�� 534 Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil and Commercial Matters 15 November 1954�� 534 Hague Convention on the Taking of Evidence Abroad in Civil and Commercial Matters 18 March 1973�� 534 Lugano Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters 1988��492, 501, 504, 510, 511

lxxxviii Table of EU and International Material Munich Amendment Act to the European Patent Convention, 29 November 2000��21, 22 Notice 2016/C 411/03, relating to the Biotechnology Directive 3 November 2016, European Commission�� 258 Paris Convention for the Protection of Industrial Property 1883��2, 135 Art 5�� 136 Paris Convention on international exhibitions signed at Paris on 22 November 1928; last revised on 30 November 1972�� 275 Patent Cooperation Treaty�� 296 Protocol on Interpretation of Article 69 of the EPC of 5 October 1973 as revised by the Act revising the EPC of 29 November 2000�� 20, 21, 22, 23, 34, 35, 42, 61, 272, 273, 308, 418, 420, 421 Art 1��20, 21, 118 Art 2��21, 22, 23, 28 Council Regulation (EEC) No 1768/92 of 18 June 1992 concerning the creation of a supplementary protection certificate for medicinal products [1992] OJ L 182/1�� 424 Regulation 2100/94 of 27 July 1994 on Community plant variety rights [1994] OJ L227/1 Art 14�� 148 Regulation (EU) 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products (Plant Products SPC Regulation) [1996] OJ L198/30�� 3, 409, 410, 414 Art 3(c)��410, 426 Regulation (EC) 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters [2001] OJ L12/1�� 491 Council Regulation (EC) No 1206/2001 of 28 May 2001 on cooperation between the courts of the Member States in the taking of evidence in civil or commercial matters (‘the Evidence Regulation’) [2001] OJ L 174/1�� 534 Art 17(1), (2)�� 535 Council Regulation (EC) No 1/2003 of 16 December 2002 On the implementation of the rules on competition laid down in Articles 81 and 82 of the Treaty [2003] OJ L2003/1 Art 2�� 178 Regulation (EC) No 816/2006 of the European Parliament and of the Council of 17 May 2006 on compulsory licensing. of patents relating to the manufacture of pharmaceutical products for export to countries with public health problems [2006] OJ L157/1�� 141 Regulation (EC) 1901/2006 of the European Parliament and of the Council of 12 December 2006 on medicinal products for paediatric use and amending Regulation (EEC) No 1768/92, Directive 2001/20/EC, Directive 2001/83/EC and Regulation (EC) No 726/2004 [2006] OJ L378/1��3, 433, 434 Regulation (EC) No 593/2008 of the European Parliament and of the Council of 17 June 2008 on the law applicable to contractual obligations (‘Rome I’) [2008] OJ L 177/6 Art 3�� 481

Table of EU and International Material lxxxix Regulation 469/2009 of 6 May 2009 concerning the supplementary protection certificate for medicinal products and replacing Regulation 1768/1992 (SPC Regulation) [2009] OJ L152/1��2, 409, 410, 411, 413, 414, 421, 423, 429, 430, 431, 432, 434, 435, 436, 437, 438, 439 recital (4)�� 430 Art 1(b)��410, 411, 413, 414, 426 Art 2��428, 429 Art 3�� 410 Art 3(a)��410, 413, 414, 415, 416, 417, 418, 419, 420, 421, 422, 423, 424, 425, 426 Art 3(b)��410, 413, 415, 416, 428, 432 Art 3(c)�� 410, 424, 425, 426 Art 3(d)��410, 411, 412, 413, 426 Art 4�� 430 Art 5�� 431 Art 5(2)(a)(i)�� 435 Art 5(2)(a)(iii)�� 436 Art 5(2)(b)�� 436 Art 5(5)�� 436 Art 10(3)�� 432 Art 13(1)�� 428 Art 18�� 433 Regulation (EU) 1217/2010 of 14 December 2010 on the application of Art 101(3) of the Treaty on the Functioning of the European Union to certain categories of research and development agreements [201] OJ L 335/36�� 462 Regulation (EU) 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast) (Recast Brussels Regulation)�� 491, 492, 493, 496, 502, 504, 506, 507, 508, 509, 510, 511 Recital (15)�� 492 Art 4(1)�� 491, 492, 496, 502, 503, 507 Art 6(1)��503, 509 Art 7(2)�� 491, 492, 497, 502, 503, 506, 507 Art 8(1) (formerly Art 6(1))��176, 491, 492, 494, 495, 496, 497, 498, 506, 507 Art 21�� 508 Art 22�� 508 Art 22(4)�� 497 Art 23�� 508

xc Table of EU and International Material Art 24(4)��164, 491, 492, 493, 495, 496, 498, 499, 500, 503, 504, 507, 508 Art 27�� 492, 498, 499, 500 Art 29��502, 503 Art 30�� 502 Art 33�� 509 Art 33(1)�� 509 Art 33(3)�� 509 Art 35�� 492, 496, 510 Art 71a(1)�� 508 Art 71b(1)�� 510 Art 71b(2)��510, 511 Art 71b(3)��510, 511 Regulation (EU) 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection (UP Reg) [2012] OJ L 361/1��61, 149, 150, 479, 481 Recital (7)�� 483 Recital (10)�� 483 Art 6�� 149 Art 7�� 440, 479, 480, 481, 482, 484 Art 7(1)–(4)�� 479 Art 8(2)�� 483 Regulation (EU) 608/2013 of the European Parliament and of the Council of 12 June 2013 concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No 1383/2003 [203] OJ L 181/15�� 535–537 Art 1�� 537 Art 2(7)�� 537 Commission Regulation (EU) No 316/2014 of 21 March 2014 on the application of Art 101(3) of the Treaty on the Functioning of the European Union to categories of technology transfer agreements [2014] OJ L 93/17�� 460–461 Art 2�� 461 Art 4(1)�� 460 Art 4(1)(a), (b)�� 460 Art 4(1)(c)(i)–(iv)�� 460 Art 4(1)(d)�� 461 Art 4(2)�� 461 Art 4(2)(a)�� 461 Art 4(2)(b)(i)–(v)�� 461 Art 4(2)(c)�� 461 Art 5�� 461 Art 5(1)(a)�� 461 Art 5(1)(b)�� 462 Regulation (EU) No 542/2014 of 15 May 2014 amending Regulation (EU) No 1215/2012 as regards the rules to be applied with respect to the Unified Patent Court and the Benelux Court of Justice [2014] OJ L 163/1��508, 510

Table of EU and International Material xci Regulation (EU) 2019/933 of the European Parliament and of the Council of 20 May 2019 amending Regulation (EC) No 469/2009 concerning the supplementary protection certificate for medicinal products [2019] OJ L 153/1�� 132, 431, 435 Annex 1�� 436 Rules of Court fees and recoverable costs, 25 February 2016 (UPC)�� 237 Rules of Procedure of the Unified Patent Court��102, 237 r 8.5(a), (b)�� 166 r 8.6�� 166 rr 61.1, 61.2�� 166 r 171.1��190, 547 r 171.2�� 547 r 172.1��190, 547 r 181�� 547 r 181.2�� 547 rr 185, 186�� 547 r 190�� 547 rr 192–199�� 547 r 196.1�� 547 r 196.6�� 234 r 201�� 547 rr 205 et seq�� 233 rr 287, 288�� 547 r 305.1(c)�� 166 Treaty on the Functioning of the European Union (TFEU) Arts 34–36�� 150 Art 101�� 459 Art 101(1)�� 460 Art 101(3)��459, 460 Art 102�� 169, 177, 178 WTO Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement�� 2, 140, 191, 467 Art 30�� 91 Art 31�� 476 Art 34�� 514

xcii

TABLE OF NATIONAL MATERIALS FRANCE Code of Civil Enforcement Procedures Arts 131-1–131-4�� 211 Code of Civil Procedure Art L 614-3�� 213 Art 514��211, 213 Art 1101�� 453 Art 1582�� 453 Intellectual Property Code Art 45�� 251 Art 52�� 30 Art L.611-6�� 442 Art L.611-7�� 449 Art L.611-8��447, 449 Art L.611-9�� 442 Art L.611-10�� 250 Art L.611-10(2)(c)�� 250 Art L.611-11�� 274 Art L.611-11(1)�� 268 Art L.611-11(5)�� 299 Art L.611-13�� 276 Art L.611-14�� 7, 11 Art L.611-14-1�� 449 Art L.611-15�� 240 Art L.611-16��261, 300 Art L. 612-5�� 7, 11 Art L.612-6�� 379 Art L.612-7��293, 295 Art L.612-7(5)�� 268 Art L.612-10�� 442 Art L.612-12�� 240 Art L.613-2��27, 76 Art L.613-3 b)�� 74 Art L.613-3 c)�� 76 Art L.613-4�� 136 Art L.613-4(2)�� 110 Art L.613-5��126, 136 Art L.613-5(d)��130, 131

xciv Table of National Materials Art L.613-5a)�� 135 Art L.613-6��72, 138, 457 Art L.613-7�� 143 Art L.613-8�� 453, 454, 458 Art L.613-9�� 453, 455, 458, 459 Art L.613-11 et seq�� 468 Art L.613-12�� 469 Art L.613-13�� 469 Art L.613-14�� 469 Art L.613-15�� 469 Art L.613-15-1�� 469 Art L.613-16��469, 475 Art L.613-17�� 469 Art L.613-18�� 469 Art L.613-19�� 469 Art L.613-19-1�� 469 Art L.613-23-1�� 7 Art L.613-25�� 7 Art L.613-29��451, 464 Art L.613-29 a)�� 451 Art L.613-29 b)�� 452 Art L.613-29 c)�� 452 Art L.613-29 d)�� 452 Art L.613-9.�� 458 Art L.613-55�� 458 Art L.615-2�� 464 Art L.615-3��193, 209 Art L.615-4�� 221 Art L.615-5-1�� 77 Art L.615-7.�� 225 Art L.615-9��154, 504 Art R.611-1�� 444 Art R.611-14.1�� 449 Art R.611-15�� 240 Art R.612-5.�� 358 Art R.612-6.�� 358 Art R.612-12��240, 358 Art R.611-10 et seq�� 476 Art R.613-13�� 476 Art R.613-14�� 476 Art R.613-15�� 476 Art R.613-16�� 476 Art R.613-17�� 476 Art R.613-18�� 476 Art R.613-19�� 476 Art R.613-20�� 476 Art R.613-21�� 476

Table of National Materials xcv Art R.613-22�� 476 Art R.613-24�� 476 Public Health Code Art R.5121-102�� 70 Art R.5125-23�� 84 GERMANY Civil Code s 137 1st sentence�� 454 s 398ff�� 454 s 413�� 454 s 741 et seq��443, 452 s 743(2)�� 452 s 745(1)�� 452 s 745(1) 2�� 452 s 747�� 456 s 809�� 520 s 810�� 520 Civil Procedure Act ss 916–945��194, 208 Employee Invention Act s 6�� 445 s 9(1)�� 450 s 42�� 445 Patent Act 1981 s 1�� 251 s 1(1)�� 390 s 1a(3).�� 241 s 3(3).�� 299 s 3(4)�� 301 s 4.�� 7 s 5.�� 241 s 9�� 144 s 10�� 144 s 10(2)�� 110 s 13�� 477 s 14�� 7 s 15(2)�� 459 s 21(1.2)�� 379 s 21 no 4�� 304 s 24.�� 469 s 34�� 359 s 34(4)�� 359, 376, 379, 394 s 38�� 304 s 85�� 469

xcvi Table of National Materials s 139(1)��65, 211 s 140a)�� 227 Patent Code Section 3, para 4�� 115 Procedure Rules of the Patent and Trademark Office s 10(2)�� 241 NETHERLANDS Civil Code Art 3:303��153, 164 Art 3:175�� 452 Art 6:162�� 75 Art 6(e)�� 497 Patent Act 1995��241, 442 Art 1(1)�� 442 Art 2(2)(c)�� 251 Art 2(3)�� 251 Art 4�� 269 Art 4(2)�� 269 Art 4(6)�� 118 Art 6�� 322 Art 7(1)�� 241 Art 8��441, 442 Art 11��441, 442 Art 12(1)�� 445 Art 12(5)�� 445 Art 12(6)�� 450 Art 13�� 443 Art 14(1), (2)�� 442 Art 25�� 360 Art 53��75, 145 Art 53(a)��72, 87 Art 53(b)�� 87 Art 53(1)�� 68 Art 53(3)�� 127 Art 53(4)�� 132 Art 53(6)�� 144 Art 53(a)�� 490 Art 53(a)(b)�� 87 Art 53(6)�� 144 Art 55��144, 145 Art 57��211, 471 Art 58��211, 471 Art 58(6)�� 471 Art 58a(1)-(3)�� 471 Art 59�� 477 Art 64��454, 458

Table of National Materials xcvii Art 65(1)�� 454 Art 65(3)�� 454 Art 66��443, 452 Art 66(2)�� 452 Art 67�� 458 Art 70(6)�� 456 Art 70(7)�� 227 Art 70(12)�� 230 Art 71�� 221 Art 72�� 221 Art 73�� 75 Art 73(1)��115, 118 Art 73(2)�� 110 Art 75(1)(b)�� 360 Art 78(4)��459, 464 Art 83(4)�� 490 SPAIN Patents Act (in force 1 April 2017)�� 229 SWEDEN Code of Judicial Procedure�� 153 Patents Act s 63, para 1�� 153 s 63, para 2�� 153 SWITZERLAND Code of Civil Procedure Art 261�� 197 Patents Act Art 9(1)(b)�� 129 Art 9(1)(c)�� 129 Art 35�� 146 Art 66(a)�� 36 Art 77(1)(a)�� 519 UNITED KINGDOM Civil Procedure Rules 1998�� 488, 519, 528 Pt 31.2�� 515 Pt 31.8�� 515 Pt 35�� 528

xcviii Table of National Materials r 31.22(2)�� 540 r 35.3�� 528 r 35.4�� 527 r 35.10(2)�� 528 r 35.10(3)–(4)�� 527 r 40.20�� 152 r 44.3(5)�� 237 PD51U�� 515 PD63�� 515 Human Medicines (Amendment etc) (EU Exit) Regulations 2019 Reg 64�� 433 Intellectual Property (Amendment etc) (EU Exit) Regulations 2020��409, 435 Legislative Reform (Patents) Order 2014, SI 2014/1997�� 134 Patents Act 1977��vi, 125, 130, 150, 151, 191, 214, 388, 443, 455, 465, 486 s 3�� 313, 318, 319 s 5(2)(a)�� 293 s 7(2)(a), (b)�� 441 s 7(3)�� 440 s 7(4)�� 441 s 11(1)�� 464 s 11(2)�� 465 s 11(3)(b)�� 465 s 11(4), (5)�� 465 s 13(1)�� 442 s 14(5)(c)��319, 385 s 30(6)�� 453 s 33�� 457 s 33(1)–(2)�� 458 s 36(1)�� 443 s 36(2)(a)�� 451 s 36(3)(a), (b)�� 451 s 39(1)�� 443 s 40�� 447 s 40(1)�� 448 s 46�� 468 ss 48–59�� 483 s 48�� 467 s 49�� 467 s 55(1)�� 474 s 55–58�� 475 s 60(1)(a)��73, 84 s 60(1)(b)�� 73 s 60(1)(c)�� 81 s 60(2)�� 113 s 60(3)�� 110

Table of National Materials xcix s 60(5)(i)�� 130 s 60(6D)–(6E)�� 212 s 61(1)�� 218 s 61(1)(b)��228, 229 s 61(2)�� 218 s 62(7)�� 147 s 64�� 142 s 64(1)�� 143 s 64(2)�� 143 s 65(2)�� 230 s 67��455, 458 s 67(1)�� 464 s 68�� 453 s 70(1)�� 92 s 70A–F��92, 93, 95 s 71�� 153 s 72(1)(c)�� 357 s 74�� 160 s 74(2)�� 157 s 75�� 486 Patents (Amendment) (EU Exit) Regulations 2019 Pt 8�� 409 Senior Courts Act 1981 s 37�� 229 s 50�� 214 Supplementary Protection Certificates (Amendment) (EU Exit) Regulation 2020�� 409 UK Human Medicines Regulations 2012 Reg 58A�� 433

c

Introduction I. Towards a ius commune of Patent Law A. International Trade; National Law International trade is nothing new, of course. Take, for example, the English, Dutch, Spanish and Portuguese trading companies competing for business in products as varied as silk, saltpetre and tea, around the coasts of the Indian Ocean from the beginning of the seventeenth century. For a period of some 300 years before this, the Hanseatic League of trading cities, centred in the Free City of Lübeck, ran a trading network of fur, wax and timber along the North and Baltic Sea coasts, from London to Novgorod. In the end, the closure of Novgorod in 1494, by Ivan III of Russia, and expulsion from London in 1597, by Queen Elizabeth I, marked a century of decline for the League. Meanwhile, the long success of the League in northern Europe was mirrored in the south by the Republic of Venice, which dominated trade with Africa and Asia in the Mediterranean. It goes without saying that the mercantile networks of Rome and the civilisations of the Ancient Near East long predate all of this. In the Old Testament, the Psalms speak of the trading ships of Tarshish and the Book of Isaiah foresees the doom of Tyre and the prosperity of Jerusalem, ‘Your gates will always stand open, they will never be shut, day or night, so that people may bring you the wealth of the nations …’.1 Go three millennia further back and one gets to the domestication of the horse, by which long-distance trade may have begun, followed only later by the dromedary camel. Nearly 900 years after the beginnings of Lübeck and Venice, however, the World Trade Organization (WTO), free trade areas, fast and frequent international travel and (accelerated in use by the Covid-19 pandemic) instant digital communication, make it trite to observe that business now operates in a global marketplace more efficiently and extensively than at any time in history. However, such global trade is far from seamless: the continuing success (and popularity) of the nation state means that invisible barriers persist. For economists this typically means tariffs, but for lawyers it first and foremost means contending with differences of national law. In particular, where there is trade in new and innovative products there are patents and patent law. It is perhaps no coincidence that the first recognisable patent rights are thought to have emerged from the trading powers of fifteenth century Venice and Elizabethan England. The connection between trade and innovation is recognised by the WTO: The idea of trade, and what makes trade valuable for societies, has evolved beyond simply shipping goods across borders. Innovation, creativity and branding represent a large amount of the value that changes hands in international trade today. How to enhance this value and how to facilitate the flow of knowledge-rich goods and services across borders have become integral considerations in development and trade policy.2

Patent rights are national in scope – their protection ends at the borders of the country in which they are registered. Even if patents are registered in every country necessary to cover the commercially important markets in which a product is sold or a process used, differences in

1 Isaiah

60:11 (NIV).

2 www.wto.org/english/thewto_e/whatis_e/tif_e/agrm7_e.htm.

2 Introduction national patent laws or their interpretation by national courts may be encountered. These can prove significant: the difference between an infringement in one country and not in another; or, the invalidity of a patent in one country and not in another. Preparing to contend with the differences in national patent regimes, either as a patent owner or a competing third party, can require the services of patent attorneys and patent lawyers in every country of commercial significance; a large cost in time and money – inefficiencies. How then can these inefficiencies be mitigated so as to allow businesses to operate more smoothly and cost effectively across borders?

B. Harmonisation in Europe i. International Treaties The first step is international harmonisation. Truly international rules on intellectual property date back to the 1880s,3 but it was not until the WTO Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement, negotiated during the 1986–94 Uruguay Round, that global minimum standards for obtaining and enforcing patents were set out for the first time. Even before TRIPS was negotiated, the issue had been a decades long concern for the European countries (including, but not limited to, the European Union Member States). Although the European countries maintain their own national courts and legislatures, pan-European treaty instruments have provided a basis for the harmonisation of national patent validity and infringement law rules. These first took shape with the introduction of the European Patent Convention (EPC), which came into force on 7 October 1977.4 The EPC provided, amongst other matters, for the central grant by the European Patent Office (EPO) of European patents protecting national territories. The latter rules were provided by the Convention for the European Patent for the Common Market,5 often referred to as the Community Patent Convention 1973 (CPC 1973), which was signed on 15 December 1975 by the nine Member States at that time. The CPC 1973 was never fully ratified and it was not until fourteen years later that another attempt to revive it was made in the form of the Agreement relating to Community Patents,6 more commonly referred to as the Community Patent Convention 1989 (CPC 1989). Much like its predecessor, although this Agreement was signed, it was never fully ratified and did not come into force,7 but it remains the basis for the acts of infringement in many European countries.

ii. European Union Law and the CJEU The EU itself has also provided harmonising and directly effective legislation of a narrower scope in the patents sphere. Questions on the interpretation of these matters are referrable for preliminary rulings to the Court of Justice of the European Union (CJEU). The decisions of the CJEU are then binding on all the European Union Member States. In patent related matters, the experience of national courts is that the instrument most likely to give rise to referrals is Regulation 469/2009 of 6 May 2009 concerning the supplementary protection certificate for medicinal products (the ‘SPC Regulation’). However, other European Union instruments relevant to patent 3 The Paris Convention 1883. 4 For the first participating countries, Belgium, France, Luxembourg, the Netherlands, Switzerland, the United Kingdom and (former) West Germany. 5 76/76 EEC Official Journal, L 17/1, 26 January 1976. 6 89/695/EEC Official Journal, L 401, 15 December 1989. 7 The Agreement was signed by 12 states but only seven ratified.

Towards a ius commune of Patent Law 3 matters include: Regulation (EC) 1901/2006 of the European Parliament and of the Council of 12 December 2006 on medicinal products for paediatric use (the ‘Paediatric Regulation’); Regulation (EU) 1610/96 of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products (the ‘Plant Products SPC Regulation’); and, Directive 98/44/EC of 6 July 1998 on the legal protection of biotechnological inventions (the ‘Biotechnology Directive’).

iii. EPO Case Law European patents take effect as a bundle of national rights upon grant, but it is still possible for them to be revoked centrally at the EPO, using the opposition procedure. An opposition must be initiated within nine months of grant of the patent or the right to oppose the patent in the EPO is permanently lost. The opposition will typically end with an oral hearing, followed by a decision of the Opposition Division that the patent in issue is invalid, valid, or partially valid and must be amended. The Opposition Division decision may then be appealed to the Technical Boards of Appeal (TBA) or even the Enlarged Board of Appeal (EBA). A final decision of the TBA that a patent is invalid or valid only in amended form will result in the patent being revoked or amended, respectively, in all the national offices in which it is registered. The EPO thus has a direct impact on the national registers. Moreover, in the process of their decision making, the TBA and EBA have built up a significant body of case law, which has varying degrees of influence in the national courts (see Table A). Take, for example, their impact on the courts of the UK: These decisions are not strictly binding upon courts in the United Kingdom but they are of great persuasive authority; first, because they are decisions of expert courts (the Boards of Appeal and Enlarged Board of Appeal of the EPO) involved daily in the administration of the EPC and secondly, because it would be highly undesirable for the provisions of the EPC to be construed differently in the EPO from the way they are interpreted in the national courts of a Contracting State.8

And: It is also well established in the jurisprudence of courts in the United Kingdom that our courts, although not bound to do so, should normally follow the settled jurisprudence of the EPO (especially decisions of its Enlarged Board of Appeal) on the interpretation of the European Patent Convention in the interests of uniformity, especially when the question is one of principle.9 Table A Jurisdictions that consider EPO Boards of Appeal case law

Belgium

Regularly

Denmark

To a limited extent

England & Wales

Regularly

France

Occasional

Germany

Occasional

Italy

Regularly

Netherlands

Regularly

Spain

Regularly

Sweden

Regularly

Switzerland

Regularly

8 Lord 9 Lord

Hoffmann in Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd [1995] UKHL 14 (26 October 1995). Hodge in Actavis Group PTC EHF & Ors v ICOS Corporation & Anor [2019] UKSC 15 (27 March 2019).

4 Introduction

iv. Differences in Application Remain Have these instruments succeeded in harmonising patent law across the European countries? The answer, in practice, is that whilst the signatories of the EPC (and within that group, the EU Member States) share very similar substantive laws at the statutory level, it is still not unusual for different national courts to come to different decisions when presented with cases arising from the same or similar facts. This is despite the fact that, although they are not obliged to do so,10 European judges of the higher instance courts frequently take notice of each others’ judgments. Where it is possible to do so, they will be consistent with the decisions of each other (Table B). Jacob LJ put it like this in the Court of Appeal in Grimme Maschinenfabrik GmbH & Co KG v Derek Scott (t/a Scotts Potato Machinery): Broadly we think the principle in our courts – and indeed that in the courts of other member states – should be to try to follow the reasoning of an important decision in another country. Only if the court of one state is convinced that the reasoning of a court in another member state is erroneous should it depart from a point that has been authoritatively decided there. Increasingly that has become the practice in a number of countries, particularly in the important patent countries of France, Germany, Holland and England and Wales. Nowadays we refer to each other’s decisions with a frequency which would have been hardly imaginable even twenty years ago. And we do try to be consistent where possible.11

A recent and notable case in which one court has acknowledged the approach taken by its foreign counterparts and adjusted its course to bring it into closer alignment with them, is the UK Supreme Court in Actavis UK Ltd v Eli Lilly & Co (see Chapter 2).12 Equally, there are cases in which the national courts have gone their own way, as they are entitled to do: The court heard submissions about the judgments of the courts of other countries which are signatories of the EPC on parallel revocation proceedings against the 181 patent. The claimants founded principally on the judgments in the Netherlands and Germany, in which in each case the national court revoked the patent on the ground of obviousness. We were also referred to judgments from other jurisdictions concerning the same patent, including Belgium and Portugal, which upheld the obviousness challenge, and Denmark, Poland and the Czech Republic, which reached a different view. I do not find the judgments particularly helpful. While consistency of approach between the domestic courts of the signatory states to the EPC on matters of principle is desirable, we are not bound by the judgments of other national courts and it is possible that national courts applying the same law may come to different conclusions for various reasons …13 Table B Consideration of other national decisions? Belgium

Yes

Denmark

To an extent

England & Wales

Yes, in order to be consistent (particularly Dutch and German)

France

Rarely

Germany

To an extent (especially English and Dutch)

Italy

To an extent (especially English and German) (continued)

10 The

Supreme Court in Schutz (UK) Limited v Werit (UK) Limited [2013] UKSC 16 para 40. Maschinenfabrik GmbH & Co KG v Derek Scott (t/a Scotts Potato Machinery) [2010] EWCA Civ 1110. 12 Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48 (12 July 2017). 13 Lord Hodge in Actavis Group PTC EHF & Ors v ICOS Corporation & Anor [2019] UKSC 15 (27 March 2019). 11 Grimme

The Purpose of this Book 5 Table B (Continued) Netherlands

Yes

Spain

To an extent

Sweden

To an extent

Switzerland

To an extent (particularly Germany)

C. The Proposed Solution – The UPC The reason decisions continue to differ are complex. There are, however, three particular difficulties faced when trying to achieve consistency of decision-making between national courts. First, procedural differences in the national European systems can present foreign judges with different evidence by which to assess the facts; Second, there are differences in the implementation of international instruments in national law; and, third, there are differences in the way the national courts interpret those laws. The proposed answer to resolving these sources of inconsistency is the Unified Patent Court (UPC) and European patent having unitary effect (Unitary Patent) system. The idea of a single, pan-European patent protecting all territories in what was then the European Economic Community, dates to the CPC 1973. However, the emergence of the UPC and Unitary Patent from this idea has taken nearly 50 years and is still (at the time of writing) not yet fully in force. The rules governing the constitution of judicial panels in the UPC are designed to achieve convergence in the approach to procedural rules, convergence of the substantive law applied and, as a result, consistency in judicial decision making. The rules by which judges are assigned to the panels of the local, regional and central divisions of the UPC Court of First Instance and the Court of Appeal are designed to achieve consistency of quality in decision making and in the application of substantive and procedural law. They do so by providing for a mix of national legal experience. The expertise of existing national patent judges is particularly important to the UPC. Those contracting Member States that have an average number of less than 50 patent cases per year over a consecutive period of three years will have only one local judge per panel of three in a local division. The remaining seats on the panel will be occupied by judges foreign to the division but allocated from the international pool of judges, recruited from across the contracting states to the UPC. This allows more experienced judges to be in the majority where most needed. These judges can be expected to share their expertise with judges from countries where patent cases are rare or who had no experience of patent matters prior to sitting in the UPC. In reviewing the law applied in first instance decisions, the Court of Appeal and, exceptionally, the Full Court, are thus expected to establish a body of case law that provides an increasingly uniform approach to patent law in the UPC over time.

II. The Purpose of this Book Pending the arrival of the UPC, and in its formative years, an account is needed of the areas of consistency and difference between the key European patent law jurisdictions of England and Wales, France, Germany, the Netherlands, and other countries, across all the areas of patent law over which the UPC will need to establish a common approach. It is also often the case that the decisions and approaches of other courts are important for European patent lawyers of all jurisdictions when submitting arguments in national courts, and this will remain the case during the

6 Introduction UPC transition period and for the lifetime of those European patents that are opted-out of the UPC system. Therefore, and with the spirit of cooperation in mind that is outlined in Grimme Maschinenfabrik, this book is also intended to provide a guide to patent lawyers acting in the national European courts: when looking outside their immediate jurisdiction to find out how other courts approach a particular issue, will they find that the approach taken by their national court is outside the mainstream, does another court provide a better solution to a particular problem, or do the other major courts supply a ready-made approach for circumstances that are new at home? To assist, this book uniquely presents patent law by theme, assessing the national approaches together, rather than in nation-by-nation chapters, and does so in unprecedented detail and scope. By taking a pan-European view of patent law, the book is also intended to outline the relevant issues ready for the development of patent law in the future UPC. For this purpose, each chapter provides a high-level summary of the key issues that the UPC will have to address, and the degree of consensus currently found. The book is thus intended to be nothing less than a ius commune of European patent law.

1 The Skilled Person and their Common General Knowledge I. The Skilled Person or Team A. Role in Brief Making a decision about infringement and/or validity requires the court, often with the assistance of expert evidence, to address the claims of a disputed patent and the prior art.1 The court must not, however, make this assessment on the basis of its own, subjective, technical knowledge or indeed that of any particular expert witness. Instead, these matters must be addressed as if ‘standing in the shoes’ of an objective and notional figure, which the EPC calls the ‘man skilled in the art’ or, the ‘skilled person’.2 In other words, the court has to adopt the mantle of the skilled person. That mantle will include the prejudices, preferences and attitudes that such persons had at the priority date.3 This is particularly important, as regards experts, because the skilled person is usually of lesser experience and knowledge than the expert who has been called to give evidence. In particular, the skilled person is not inventive: … a skilled technician who is well acquainted with workshop technique and who has carefully read the relevant literature. He is supposed to have an unlimited capacity to assimilate the contents of, it may be, scores of specifications but to be incapable of a scintilla of invention.4

More pithily, it has been said ‘this man if real, could be very boring – a nerd’.5 This chapter discusses the characteristics of this fictional, but central, legal character in patent law. The chapter also examines the nature of the common general knowledge possessed by the skilled person, which may be applied to interpret and supplement the information contained within a patent or patent application,6 as well as the prior art.7

1 Note that, in France, the skilled person is referred to by the IPC only in relation to inventive step (Art L 611-14) and sufficiency (Arts L 612-5, L 613-23-1 and L 613-25). The same is true in Italy (respectively Arts 48 and 51 IPC). 2 ‘Fachmann’ in Germany (s 4 Patent Act 1981 and relevant to scope of protection in s 14 Patent Act); ‘homme du métier’ in France (Arts L 611-14, L 612-5, L 612-5, L 613-23-1 and L 613-25 IPC). 3 Asahi Medical Co Ltd v Macopharma (UK) Ltd [2002] EWCA Civ 466 (16 April 2002). 4 House of Lords, Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 (24 February 1971). 5 Court of Appeal, Rockwater Ltd v Technip France SA & Anor [2004] EWCA Civ 381 (01 April 2004). 6 T 1117/14 Implant for ligament reconstruction/MAYR (unpublished) (29 September 2015). 7 T 890/02 Chimeric gene/BAYER [2005] EPO OJ 497 (14 October 2004).

8 The Skilled Person and their Common General Knowledge

B. Definitions Various descriptions of the skilled person can be found in the national case law although many, such as Sweden, for example, correspond to the skilled person according to TBA case law: in France the skilled person is regarded as unimaginative and has a ‘normal knowledge’ of the technical field at issue;8 in Germany it is an uninventive practitioner with average knowledge, skills and experience in the relevant technical field;9 in the Netherlands, the skilled person or ‘average skilled worker’ is again a fictional character10 of the law who has knowledge of the specific relevant prior art in his field of expertise and will address matters of validity and scope of claim,11 but who is uninventive and will not suggest solutions that go against prejudices in the art. Like in the national courts, descriptions of the skilled person or team in the case law of the TBA vary in their precise terms. However, the Guidelines for Examination12 provides the following, general definition of the person skilled in the art: The ‘person skilled in the art’ is presumed to be a skilled practitioner in the relevant field of technology who is possessed of average knowledge and ability and is aware of what was common general knowledge in the art at the relevant date. The skilled person is also presumed to have had access to everything in the ‘state of the art’, in particular the documents cited in the search report, and to have been in possession of the means and capacity for routine work and experimentation which are normal for the field of technology in question.

The skilled person or team has a real and practical interest in the subject matter of the invention,13 which the English courts consider to include devising the invention itself as well as putting it into effect.14 The concept of the skilled person therefore applies in two distinct circumstances (see section F).

C. Area of Expertise As a general principle, in the EPO, the technical field and general knowledge associated with the notional skilled person within the meaning of Article 56 EPC should be defined on the basis of the objective technical problem to be solved by that skilled person in the framework of the problem-solution approach. This is because the skilled person under Article 56 EPC is the person qualified to solve the established objective technical problem.15 The knowledge of a skilled team of persons with different areas of expertise can be taken into account in appropriate circumstances.16 For example, where one person is qualified to deal with one part of the solution to the 8 Cass. com. Robert Bosch GmbH v SA ets Guillet (17 October 1995); Cass. com. Newmat v Normalu, no° 06-19.149 (26 February 2008). 9 BGH, Bodenseitige Vereinzelungseinrichtung GRUR 2004, 1023 (7 September 2004). 10 Rechtsbank Den Haag, Henkel v Diversey [2001] BIE 2002/37. 11 Rechtsbank Den Haag, Duphar v Gist-Brocades [1987] BIE 1988/28. 12 Guidelines G-VII 3, March 2021. 13 Garmin (Europe) Limited v Koninklijke Philips N.V. [2019] EWHC 107 (Ch) (29 January 2019). 14 Illumina Cambridge Limited v Latvia MGI Tech SIA & Ors [2021] EWHC 57 (Pat) (20 January 2021). 15 T 0984/15 Configuring proximity indication/HTC (unpublished) (8 September 2020). 16 T 0986/96 Method and apparatus for a mail processing system (unpublished) (10 August 2000); in Germany see, eg, BGH, Escitalopram GRUR 2010, 123 (9 September 2009); French case law considers that the skilled person can be defined as ‘a team of several professionals of the same specialty’ (TGI Paris, 3.3, 2012/13507 (5 December 2014); CA Paris, 5.2, 2013/00552 (20 March 2015)) or different specialties (CA Paris, Pôle 5, ch. 1, Jan. 12, 2016, no 2013/13050; TGI Paris, May 18, 2017, no 14/15459); in Switzerland see, eg, Federal Supreme Court, BGE 120 II 71 para 2 Wegwerfwindel (8 February 1994) and Federal Patent Court O2017_007, para 24 Hamilton Medical v imtmedical (1 November 2019).

The Skilled Person or Team 9 problem, while another is qualified to deal with another part of the problem in a different technical field and possesses common general knowledge accordingly (see Local Common General Knowledge and Technical Mindset). It is often possible to deduce the attributes which the skilled person must possess from the assumptions which the specification clearly makes about their abilities.17 Defining the correct area of technical knowledge to be addressed by the skilled person may be difficult in cases where technical fields meet.18 The skilled person may be taken to have knowledge of associated technical fields,19 or to ask for advice from such people.20 Where a new technology is about to spread into a traditional field, it is common practice to group people from both technical fields into a development team.21 The following principles have been summarised in Iontophoretic delivery device/ALZA CORPORATION T 26/9822 to address such situations: i) ii) iii) iv) v)

If the problem prompts the person skilled in the art to seek its solution in another technical field, then the specialist in that field is the person qualified to solve the problem.23 The person skilled in the art can be expected to look for suggestions in neighbouring fields if the same or similar problems arise in such fields.24 The skilled person may be expected to look for suggestions in a general technical field if he or she is aware of such fields.25 In advanced technical fields the competent ‘skilled person’ could be taken to mean a team of experts from the relevant technical branches. Solutions of general technical problems in non-specific (general) fields are considered to be part of the general technical knowledge.26

D. Level of Expertise Note from the Guideline for Examination general definition (B. Definitions) that the skilled person has average knowledge and abilities. In other words, the skilled person, or team, does not have any inventive ability. The skilled person is also taken to know all the prior art relevant to their area of technology,27 whether by disclosure in any form or by use (see chapter ten). They are also possessed with the common general knowledge and the ability to make a teaching work by routine work and experimentation,28 provided it does not entail undue burden (see chapter twelve). In the field of biotechnology, the skilled person has been described as

17 Horne Engineering Co Ltd v Reliance Water Controls Ltd [2000] FSR 90 (10 June 1999). 18 See, eg, Cour de Cassation, Giulini Chemie GmbH v Lambiotte Frères PIBD 1991, 493 III 76 (18 October 1990). 19 CA Paris, 18 May 2005, no° 03/13550; Cass. com. Société Packetis v Société Pharmapost, no 08-11.235 (3 March 2009). 20 BGH, Stoβwellen-Lithotripter GRUR 1999, 145 (12 May 1998). 21 T 0015/15 Method for fabricating a dental appliance/ALIGN TECHNOLOGY INC (unpublished) (16 March 2017). 22 T 26/98 Iontophoretic delivery device /ALZA CORPORATION (unpublished) (30 April 2002). 23 See also T 32/81 Cleaning apparatus for conveyor belt/FIVES-CAIL BABCOCK OJ 1982, 225 (5 March 1982). 24 See T 176/84 Pencil sharpener [1986] OJ EPO 50 (22 November 1985); BGH, Widerstandsschweißvorrichtung X ZR 107/05 BeckRS 2009, 23384 (30 June 2009); LG Düsseldorf 4b O 39/16 BeckRS 2017, 151515 (5 October 2017). 25 See also T 560/89 Filler mass/ N.I.INDUSTRIES [1992] OJ 725 (24 April 1991) and T 955/90 Impact detection apparatus/BOARD OF TRUSTEES OPERATING MICHIGAN STATE UNIVERSITY (unpublished) (21 November 1991); a skilled person trying to solve a non-trivial problem may be led to the claimed process by simple examples from everyday life not related to the problem in question (T 397/87 Verfahren zum Herstellen von Gipsbauteilen/ KOSSATZ (unpublished) (31 January 1989). 26 T 195/84 General technical knowledge/BOEING [1986] OJ EPO 121 (10 October 1985). 27 T 1464/05 Hydrogen-absorbing composition/PRYSMIAN (unpublished) (14 May 2009). 28 T 1030/06 Secure buffering/BROADCOM CORPORATION (unpublished) (17 December 2008).

10 The Skilled Person and their Common General Knowledge someone operating at a practical level, and that the technical development which might normally be expected of them does not include solving technical problems through scientific research.29 Furthermore, the skilled person has been characterised as cautious and conservative in their approach to the prior art:30 the skilled person in this field is well aware of the fact that even a small structural change in a product (eg a vector, a protein, a DNA sequence) or in a procedure (eg a purification process) can produce dramatic functional changes. Therefore, the said expert would constantly be conditioned by the prior art and, before taking action, would carefully ponder any possible modification, change or adjustment against the background of the existing knowledge. Under these circumstances, in the Board’s view, the skilled person would adopt a conservative attitude. However, this must not be seen in the sense of being reluctant or opposed to modify or adjust a known product or process, but rather in the sense of being cautious. For example, the skilled person in question would neither go against an established prejudice nor try to enter into ‘sacrosanct’ or unpredictable areas nor take incalculable risks. However, within the normal design procedures, the said expert would readily seek appropriate, manifest changes, modifications or adjustments which involve little trouble or work and no risks or only calculable risks, especially for the sake of obtaining a more handy or convenient product or of simplifying a procedure. In particular, the skilled person working in one field (e.g. expression in yeast) would regard a means conveniently adopted in a neighbouring field (e.g. the bacterial art) as being readily usable also in that field, if this transfer of technical knowledge involves nothing out of the ordinary.

E. Hindsight Risk Caution needs to be exercised when examining inventive step using the ‘problem-and-solution’ approach in order to avoid the inclusion of hindsight by the choice of skilled person (see chapter eleven): the technical problem must be formulated so as not to anticipate the solution, so the starting point for defining the appropriate skilled person in this context is the technical problem to be solved on the basis of what the closest prior art discloses – the skilled person must not represent the technical field to which the proposed solution belongs if this is different to the one considered when formulating the technical problem. Furthermore, the skilled person’s knowledge does not include the different technical field of the proposed solution, if the closest prior art gives no indication that this is where the solution is to be found.31 In other jurisdictions where a problem-and-solution approach is taken to addressing inventive step, such as the Netherlands and, to an extent, France,32 the skilled person’s technical knowledge is defined by the field of the technical problem underlying the patent rather than the solution, so far as these are different.

F. Different Skilled Person for Sufficiency and Inventive Step In most cases, and in a number of countries,33 the skilled person is the same, whatever their purpose in construing the subject-matter of a claim.34 However, for the purpose of evaluating inventive step the skilled person has only the prior art and common general knowledge to hand,

29 T

0500/91 Alpha-interferon II/BIOGEN (unpublished) (21 October 1992). 0455/91 Expression in yeast/ GENENTECH [1995] OJ EPO 684 (20 June 1994). 31 T 422/93 Luminescent security fibres/JALON [1997] OJ EPO 25. 32 Cass. com. Boegli Gravures v Darsail 11-18440 (20 November 2012). 33 R Busse, Patentgesetz (Berlin, de Gruyter, 2020) s 4, 93. 34 T 967/09 Influenza vaccines/ABBOTT BIOLOGICALS (unpublished) (4 November 2014). 30 T

The Skilled Person or Team 11 but for the purpose of evaluating sufficiency of disclosure they additionally have knowledge of the invention as disclosed. Consequently, the skilled person may be held to have a different identity in each case;35 the latter is the person to whom the patent is addressed and whose attributes, skills and common general knowledge will be necessary to implement it (see section F.i. below).36 With regard to the former, one must have regard to the reality of the position at the time and the combined skills of research teams in the art, and not blindly applying an approach based on the definition of the problem to be solved (see F.ii. below).37 In other jurisdictions there is no distinction. Under French Law, for example, sufficiency must be assessed in reference to the skilled person38 and this skilled person is the same as the one for the determination of inventive step:39 the average technician with average knowledge and ability in the technical field at stake. Case law considers that: i)

the description will be sufficient when the skilled person can reproduce the invention with the help of the indications provided by the patent and his own general knowledge;40 ii) an invention lacks inventive step when, in view of the prior art and in consideration of the problem posed, the skilled person could arrive at the solution by simple operations of execution.41

i. Skilled Person for Insufficiency A distinction arose in English law in the Schlumberger decision of the Court of Appeal,42 in which it was held that the expertise of the skilled team for the purpose of determining claim construction and sufficiency may differ from that used to determine obviousness. This case concerned a patent for a method of marine controlled source electromagnetic (CSEM) surveying on an under-sea layer to find out whether it contains hydrocarbon reserves. The method used the fact this hydrocarbon has high resistivity (low conductivity) whilst salt water is the opposite (low resistivity, high conductivity). Prior to the invention of the patent, it was necessary to drill an exploratory well in order to confirm a potential hydrocarbon-containing under-sea layer once it had been found by seismic methods. It was found that the kind of scientist who would be actively engaged by oil and gas exploration companies to find hydrocarbon reserves would be an exploration geophysicist. Such an individual would know that seismics can identify a potential hydrocarbon containing layer, but not whether it contains hydrocarbon reserves or merely water. An exploration geophysicist would have merely a vague knowledge of CSEM and no apparent use for it. To perform the method of the patent, the skills of a CSEM expert would be needed, otherwise the patent would fail to give enough instructions on how to perform the method. Similarly, to determine the scope of the claims, a skilled team including both exploration and CSEM geophysicists would be needed. Did this mean, by law, that the prior art must also be viewed through the eyes of a skilled person or team with both exploration geophysics and CSEM

35 T 694/92 Modifying plant cells/ MYCOGEN PLANT SCIENCE [1997] OJ EPO 408 (8 May 1996). 36 Illumina Cambridge Limited v Latvia MGI Tech SIA & Ors [2021] EWHC 57 (Pat) (20 January 2021). 37 Court of Appeal, Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819 (28 July 2010), and Illumina Cambridge Limited v Latvia MGI Tech SIA & Ors [2021] EWHC 57 (Pat) (20 January 2021). 38 Art L 612-5 IPC. 39 Referred to in Art L 611-14 IPC. 40 CA Paris, 4e ch., s A, 29 November 1995, PIBD 1996, III, 89; Cass. com. 22 March 2005, no° 03-16.532, 03-18.818; CA Paris, 6 January. 2006; PIBD 2006, III, 241. 41 CA Paris, 1 March 2006: PIBD 2006, no° 829, III, 313. 42 Court of Appeal, Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819 (28 July 2010).

12 The Skilled Person and their Common General Knowledge skills? If so, the invention would be prima facie obvious. The Court of Appeal noted that there is not a different construction given to the phrase ‘person skilled in the art’ in the different Articles of the EPC. It also acknowledged that in nearly all cases the skilled team would on the facts be the same for all purposes of obviousness, novelty, construction and sufficiency. For both claim construction and sufficiency, however, the person skilled in the art already has the patent in hand to tell them how to perform the invention and what the monopoly claimed is – these are not available when considering obviousness, and the relevant art may be different if the invention of the patent itself is art-changing. It was held, therefore, that the correct approach in this case was to start with the real problem faced by exploration geophysicists and ask whether the notional exploration geophysicist who read the cited prior art would see that the answer was to use CSEM; or, if not that, at least that CSEM had a sufficient prospect of being useful that it was worth asking a CSEM expert.

ii. Skilled Person for Obviousness The Schlumberger case takes support from JALON/Luminescent Security Fibres T422/93.43 In this case, the patent was for a process for the production of security fibres containing luminescent rare earth chelates. Using the problem-and-solution approach to obviousness, the closest prior art was identified as the idea of incorporating chelates in a mass and then extruding in a spinning process. The patentee said its method, which involved using a dyeing process, was better than the prior art because it was useful for small quantities of fibre. The opposition division relied on the view that the skilled person was a dyeing expert who would see immediately that dyeing could be used to incorporate chelates. The Board, however, considered that the idea of introducing a rare earth chelate by a dyeing process clearly formed part of the solution to the technical problem to be solved. The expert in dyeing could not therefore be the skilled person because the very fact of choosing to introduce rare earth chelates by a dyeing process was the essential feature of the solution proposed. The dyeing expert would, however, be necessary to make the invention work. The implication of the reasoning in Jalon was therefore that the person skilled in the art for obviousness was not necessarily the same person skilled in the art for performing the invention once it was made. The English Court of Appeal in Illumina addressed the difficulty that can arise if the skilled person is identified for obviousness purposes by reference to the problem that they are trying to solve, per Birss J: There are cases of so called ‘problem-inventions’ in which simply asking if the solution is obvious given the problem is unfair because inventiveness lay in identifying the problem. The fact the solution was obvious once you identify the problem does not prove a lack of inventive step in such a case. In fact experience shows that real cases are often more nuanced in that there can be aspects of a problem which are not common general knowledge and so one cannot always draw a sharp line between problem invention cases and other cases.

Determining the skilled person or team on the basis of the problem to be solved can also impose an overly narrow skill set.44 Instead, the Court of Appeal has established a test for identifying the skilled person in cases where they are different to the skilled person for sufficiency. This requires

43 T

422/93 JALON/Luminescent Security Fibres [1997] OJ EPO 24 (21 September 1995). Attic Stairs v The Loft Stairs Company Limited [2009] EWHC 1221 (Pat) (9 June 2009).

44 Folding

Common General Knowledge 13 the skilled person or team to be based on an established field at the time, either in research or manufacture,45 per Birss J: i) To start by asking what problem does the invention aim to solve? ii) That leads one in turn to consider what the established field which existed was, in which the problem in fact can be located. iii) It is the notional person or team in that established field which is the relevant team making up the person skilled in the art. As regards step ii), the judge adds that there will always be some established field in which the problem would have been located. How wide the definition of that field should be will depend on the facts and the reality. Furthermore, the field is the one in which the problem can be located, looking back from today as an exercise in hindsight.

G. Approach to the Prior Art A number of courts46 have emphasised that the skilled person, whilst knowledgeable, is very forgetful of material that is outside their common general knowledge – unless a piece of prior art is part of the common general knowledge, the skilled person is treated as only ever aware of one piece of prior art at any one time. The rule exists to prevent prior art being combined – ‘mosaiced’ – when addressing obviousness, unless to combine more than one piece of prior art is itself obvious.

II. Common General Knowledge A. Basic Principles The state of the art may reside in the common general knowledge of the person skilled in the art or the skilled team. A working definition of common general knowledge is provided by the Case Law of the Boards of Appeal: … common general knowledge is to be found in basic handbooks, monographs, encyclopaedias, textbooks and reference books. It is knowledge that an experienced person in the field in question is expected to have, or at least to be aware of, to the extent that he knows he could look it up in a book if he needed it.47

The common general knowledge is not, however, limited to documented information. It may also be too new to be recorded in textbooks48 and composed of several sources, such that it 45 Illumina Cambridge Limited v Latvia MGI Tech SIA & Ors [2021] EWHC 57 (Pat) (20 January 2021). 46 For example, England and Wales and The Netherlands. For Germany, see Schulte, Patentgesetz mit Europäischem Patentübereinkommen 10th edn (Cologne, Carl Heymanns, 2017) s 4, 17 with further references. Similarly, in Spain, the Supreme Court has held that prior art documents may not be combined unless that specific combination is directed by the prior art or it would have been obvious to the skilled person (Accord & Sandoz v Astrazeneca 334/2016 (20 May 2016)); see also, Barcelona Commercial Court No 1 SCA Tissue France SAS v Industrie Cartarie Tronchetti Ibérica SL 84/2018 (26 March 2018); in the same vein, Italian courts made clear that the skilled person is capable of combining the closest prior art with other disclosures, provided that, at the date of priority, there was a unequivocal pointer that would have prompted him to do so (Tribunal of Milan, 12 February 2014). 47 Case Law of the Boards of Appeal of the European Patent Office, 2.8.1, July 2019. 48 T 0051/87 Starting compounds/MERCK [1991] OJ EPO 177 (8 December 1988).

14 The Skilled Person and their Common General Knowledge does not depend on the publication of any one document on a particular date.49 Instead, it may be simply a part of the unwritten ‘mental furniture’ of the skilled person50 and inferred from a number of sources.51 Such information must be unambiguous and directly and straightforwardly usable without further investigation being required.52 Solutions of general problems are viewed as forming part of the general technical knowledge attributed to the skilled person qualified in the specific technical field.53 Common general knowledge does not, however, ordinarily include patents and scientific papers,54 unless these establish consistently that particular technical subject matter was generally known in the art at a particular date.55 This approach is reflected in the statement describing common general knowledge in the English court by Luxmoore, J in British Acoustic Films: In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art.56

It has been commented, however, that ‘accepted without question’ in the above passage may be putting it too highly and that ‘generally regarded as a good basis for further action’ is preferable.57 The common general knowledge of a skilled person will often, however, be as much about knowing what does not work as it is about knowing what does. Both are examples of a ‘good basis for further action’ in that they are ideas which are worth acting upon.58 The common general knowledge may also include contradictions. So, the fact a given technique was something which had been proposed for some years, tried out by a number of groups, but not (yet) shown to work, would not in and of itself preclude information about that technique being held to be part of the common general knowledge.59 Hindsight combinations of common general knowledge are to be avoided.60 These principles are generally reflected in the national cases. In Germany, for example, a skilled person may also make use of the knowledge and skills they have acquired from their 49 T 0786/00 Process for preparing polycarbonates/GENERAL ELECTRIC COMPANY (unpublished) (19 December 2001). 50 T 939/92 Triazole/AGREVO [1996] OJ EPO 309. 51 T 0786/00 Process for preparing polycarbonates/GENERAL ELECTRIC COMPANY (unpublished) (19 December 2001). 52 See T 149/07 System for surveillance/TELEFONAKTIEBOLAGET LM ERICSSON (unpublished) (20 November 2009). 53 T 195/84 General technical knowledge/BOEING [1986] OJ EPO 121 (10 October 1985). For example, in respect of technical standards, see T 519/12 Metal-containing transaction card and method of making the same/AMERICAN EXPRESS TRAVEL RELATED SERVICES COMPANY INC (unpublished) (17 March 2017). 54 For example, see T 1000/12 Method of supplementing animals with carotenoids by drinking water/ ZHEJIANG MEDICINE CO (unpublished) (17 December 2013). 55 T 0151/05 Method of producing a piston through casting/ TOYOTA JIDOSHA KABUSHIKI KAISHA (unpublished) (22 November 2007). 56 Luxmoore J in British Acoustic Films & Ors v Nettlefold Productions (1936) 53 RPC 221. 57 Court of Appeal, General Tire v Firestone Tire & Rubber [1972] RPC 457 (28 July 1971). 58 Illumina Cambridge Limited v Latvia MGI Tech SIA & Ors [2021] EWHC 57 (Pat) (20 January 2021). 59 Merck Sharp & Dohme Ltd v Ono Pharmaceutical Co Ltd and Bristol Myers Squibb Co v Merck and Co Inc [2015] EWHC 2973 (Pat) (22 October 2015). 60 Apimed Medical Honey Ltd v Brightwake Ltd (t/a Advancis Medical) [2012] EWCA Civ 5 (20 January 2012) and Abbott v Evysio [2008] EWHC 800 (Pat).

Common General Knowledge 15 training and experience, in order to understand the prior art, what may be deduced from it and to apply it to find uninventive solutions to problems that arise in the relevant technical field.61 This knowledge is referred to as ‘general knowledge’. In the Netherlands, the skilled person is also possessed of common general knowledge in the technical field of the invention at issue and may use it, for example, in order to reproduce the teaching of the prior art. Similarly, in France, when assessing whether a skilled person would be unable to carry out the teaching of a patent without using inventive effort, the skilled person is entitled to rely on their own scientific and technical knowledge.62 In Switzerland too, in line with the case law of the Boards of appeal, the content of standard textbooks in the skilled person’s own technical field is considered part of common general knowledge, but not the content of specific scientific publications or patent specifications.63 In Switzerland, the Federal Patent Court considers that an express and prominent reference in a standard textbook (part of the common general knowledge) to a specific scientific publication (not part of the common general knowledge) shows that the skilled person, when attempting to solve the technical problem, would probably have had recourse to the specific scientific publication.64 Furthermore, a textbook published shortly after the priority date (and thus not part of the state of the art) can still be understood as circumstantial evidence of the common general knowledge on the priority date, given the long lead time of such standard works until their publication.65

B. Literature Searches and Databases i. Secondary Common General Knowledge It has been debated whether a second category of information, related to the common general knowledge, has developed in the English courts. This has been referred to as ‘secondary common general knowledge’, per Sales J in Teva UK Ltd & Anor v Astrazeneca AB,66 and consists of documents that the skilled person would quickly identify in a literature search: I was also taken to a range of journal articles which were not in leading journals in the field of respiratory medicine, and would not have been likely to have been read by the notional skilled person in the ordinary course of keeping himself up to date. On the other hand, these materials would have been quickly identified by any person conducting a literature search and review into the use of formoterol and ICS in relation to the treatment of asthma. I refer to these articles as the ‘secondary articles’. A question arises whether these materials should be taken into account in assessing the CGK of the notional skilled person. In my view, they should be.67

In the same case, the judge suggests that common general knowledge includes not just information directly in the mind of the notional skilled person and such information as they would be able to locate by reference to well-known textbooks, but also databases: This guidance needs to be adapted and kept appropriately up to date for the procedures for dissemination of scientific knowledge in the age of the internet and digital databases of journal articles. Searches

61 BGH,

Warenregal 166/97 (29 February 2000); BGH, Polymer Composition X ZR 134/11 (12 December 2012). Paris, Sandoz v Eli Lilly 10/17727 (13 January 2012). Patent Court, O2018_008, para 17 Glenmark v Boehringer Ingelheim (2 February 2021). 64 ibid. 65 ibid, para 19, Glenmark v Boehringer Ingelheim (2 February 2021). 66 Patents Court, Teva UK Ltd & Anor v Astrazeneca AB [2014] EWHC 2873 (2 September 2014). 67 ibid, para 58. 62 CA

63 Federal

16 The Skilled Person and their Common General Knowledge of such databases are part and parcel of the routine sharing of information in the scientific community and are an ordinary research technique. In my view, if there is a sufficient basis (as here) in the background CGK relating to a particular issue to make it obvious to the unimaginative and uninventive skilled person that there is likely to be – not merely a speculative possibility that there may be – relevant published material bearing directly on that issue which would be identified by such a search, the relevant CGK will include material that would readily be identified by such a search.

This approach would open the scope of the common general knowledge to a potentially large number of documents. So, while Carr J in Glaxosmithkline UK Ltd v Wyeth Holdings LLC68 voices approval of the above passage, he qualifies it sufficiently to bring it back into line with the definition of Luxmoore J in British Acoustic Films: [Sales J] does not mean that all material available on-line constitutes common general knowledge. Rather it indicates that material which the skilled addressee knows to be available on-line and which is generally accepted as a good basis for further action (such as material which might be found off-line in a textbook or a key journal article) may constitute common general knowledge.69

To be common general knowledge, therefore, the information must be widely read and widely accepted, rather than merely distributed widely by a database. Comparatively, this is a narrower approach to databases than that taken by the TBA (see The TBA Approach to Databases, subsection C. below). In addition, the English Court of Appeal has tended to disagree with the idea that information the skilled person knows they can look up as a matter of routine is part of the common general knowledge. Instead, the court considers this to be part of the question of obviousness: Mr Silverleaf sought to characterise the sort of information which a person skilled in the art would know he could look up as a ‘species of or extension of … common general knowledge.’ But that is not correct – as Arnold J made clear. It will be taken into account for an obviousness assessment not because it is in the notional head of the notional person but because it would be obvious to such a person to look it up.70

The correct approach to such information is instead that set out in KCI Licensing Inc & Ors v Smith & Nephew Plc & Ors: … even if information is neither disclosed by a specific item of prior art nor common general knowledge, it may nevertheless be taken into account as part of a case of obviousness if it is proved that the skilled person faced with the problem to which the patent is addressed would acquire that information as a matter of routine. For example, if the problem is how to formulate a particular pharmaceutical substance for administration to patients, then it may be shown that the skilled formulator would as a matter of routine start by ascertaining certain physical and chemical properties of that substance (e.g. its aqueous solubility) from the literature or by routine testing. If so, it is legitimate to take that information into account when assessing the obviousness of a particular formulation. But that is because it is obvious for the skilled person to obtain the information, not because it is common general knowledge.71

In summary, if a skilled person knows where to find a document it may be common general knowledge if what is found reflects what is widely read and accepted as a good basis for further action. Aside from these documents, matter that is sought as a matter of routine, such as a literature search, is instead only to be taken into account when assessing obviousness.

68 Patents Court, Glaxosmithkline UK Ltd v Wyeth Holdings LLC [2016] EWHC 1045 (Ch) (12 May 2016). 69 ibid, para 30. 70 Court of Appeal, Richter Gedeon Vegyeszeti Gyar RT v Generics (UK) Ltd (t/a Mylan) [2016] EWCA Civ 410 (26 April 2016). 71 Patents Court, KCI Licensing Inc & Ors v Smith & Nephew Plc & Ors [2010] EWHC 1487 (Pat) (23 June 2010).

Common General Knowledge 17

ii. The TBA Approach to Databases The TBA has stated that when identifying common general knowledge it would take undue effort for the skilled person to search literature covering most of the state of the art.72 As regards databases, however, the TBA criteria are seemingly broad enough to catch most resources. In Chimeric gene/BAYER T 890/02,73 the Board concluded that whilst they are not encyclopaedias and handbooks in a strict sense, databases: i) which are known to the skilled person as an adequate source for obtaining the required information; ii) from which this information may be retrieved without undue burden; and ii) which provide it in a straightforward and unambiguous manner without any need for supplementary searches, do represent the common general knowledge of the skilled person. Similarly, under German law, the common general knowledge also comprises knowledge that the skilled person can easily obtain from accessible resources such as basic handbooks and textbooks and databases.74

C. Local Common General Knowledge and Limited Technical Mindset As in Germany, the TBA does not make a distinction between the common general knowledge known by the skilled person in one geographical area and that known in another. For example, it is the view of the TBA that the language of publication alone cannot be decisive for the admissibility of a technical book representing the common general knowledge of the skilled person. Otherwise, there would be a prejudicial differentiation between skilled persons’ knowledge according to their nationality.75 The English Patents Court has taken a different view, stating that when applying the common general knowledge to a UK patent, it must ‘at minimum’ be shown to be common general knowledge in the UK: … The reason for this is that, whether one is concerned with the validity of a European Patent (UK), or a UK patent, one is concerned with a right in respect of the UK. It is true that the prior art may have been published anywhere in the world, but I do not think that alters the need for the skilled team to consider that art as if they were located in the UK. I do not think it matters that a fact was common general knowledge in (say) China, if it was not common general knowledge here. The position may be different if all the persons skilled in a particular art in the UK are acquainted with the position in China, but no point of that kind arises here.76

In Dyson v Hoover77 it was stated that the art was ‘functionally deaf and blind to any technology which did not involve a replacement bag’. In other words, it was a ‘bagridden’ mindset. This would have affected the skilled addressee’s attitude to art where the dust was instead removed with a cyclone. Similarly, it has been observed in the Netherlands that the skilled person is not supposed to have very much common general knowledge outside their field of expertise, and so combining material which is common in another technical field will not generally be obvious. In

72 See T 171/84 Redox Catalyst/ AIR PRODUCTS [1986] OJ EPO 95 (24 October 1985) and T 676/94 Radial tyre/ SUMITOMO (unpublished) (6 February 1996). 73 T 890/02 Chimeric gene/BAYER [2005] OJ EPO 497 (14 October 2004). 74 ibid. 75 T 0426/88 Combustion engine/LUCAS [1992] OJ EPO 427 (9 November 1990). 76 Patents Court, Warner-Lambert Company LLC v Actavis Group PTC EHF & Ors [2015] EWHC 2548 (Pat) (10 September 2015). See also, Patents Court, Teva UK Ltd v Merck & Co Inc [2009] EWHC 2952 (Pat) (20 November 2009). 77 [2002] RPC 22.

18 The Skilled Person and their Common General Knowledge Add2 Research v Space Digital Signal,78 Meade J explains that mindset is usually addressed under the heading of common general knowledge, but may perhaps be thought of as a sort of negative, or limiting common general knowledge. Like any other common general knowledge, the judge adds, a mindset has to be prevalent; it has to be generally held.79 A mindset is usually about an attitude of the notional skilled addressee that something must or should not be done. It is not satisfied merely because a state of affairs is in fact common. In Philips v Asustek Floyd LJ said that a commercially driven mindset may be part of the common general knowledge, but if the changes from the prior art are obvious, there is no further question of whether it would appear commercially attractive. A mindset must be prevalent.80 It is also usually about an attitude of the notional skilled addressee that something has to be done, or should not be done, but it is not satisfied merely because a state of affairs was in fact common. For example, it would take very powerful evidence to establish that a mindset existed that a laborious manual task could not or should not be put under computer control, in a setting where computers were already in use in related areas81 (see also section I.C. above and chapter eleven).

III. Key Issues for the UPC The skilled person and the common general knowledge are nowhere mentioned in the UPC Agreement. It is clear, however, from the discussions of determination of scope of protection of claim and validity in the following chapters, that these concepts will be required when assessing these issues in this court. The detail of these concepts as they apply in the UPC is to be worked out in practice, but the following characteristics can be summarised from the national courts and the EPO.

A. The Skilled Person The Boards and the national courts all share the concept of the skilled person, or team, although there are differences in terminology. There is no shared definition, although the most universal attempt at such a definition can be found in the Guidelines for Examination – the person skilled in the art: should be presumed to be an experienced practitioner who has average knowledge and abilities and is aware of what was common general knowledge in the relevant art concerned at a particular time (average skilled person). He should also be presumed to have had access to everything in the state of the art, in particular the documents cited in the search report, and to have had at his disposal the normal means and capacity for routine work and experimentation.

Whether the skilled person is thought of as a ‘nerd’, unimaginative, average or otherwise, however, the important connecting characteristic across these jurisdictions must be that the skilled person

78 Add2 Research and Development Limited v Space Digital Signal Processing & Control Engineering GmbH [2021] EWHC 1630 (Pat) (17 June 2021). 79 See Cipla v Glaxo [2004] RPC 43 and Philips v Asustek [2019] EWCA Civ 2230. 80 Cipla Ltd v Glaxo Group Ltd [2004] EWHC 477 (Pat) and Koninklijke Philips NV v Asustek Computer Inc [2019] EWCA Civ 2230. 81 Add2 Research and Development Ltd v DSpace Digital Signal Processing and Control Engineering GmBH [2021] EWHC 1630 (Pat) (17 June 2021).

Key Issues for the UPC 19 is uninventive. Indeed, they are cautious and conservative. This is of course crucial when it comes to questions of whether the skilled person or team would think an invention obvious for the purpose of Article 56 EPC. Despite the skilled person’s lack of invention, they do possesses a faultless common general knowledge relevant to their technical field and are able to bring this to bear on a disputed patent in order to understand its teaching and its claims. Where the skilled person’s knowledge does not match the full extent of subject matter of a patent, it can be complemented by other skilled people in the team. The TBA has set out principles by which a skilled person may be taken to have knowledge of associated technical fields, or to ask for advice from such people. Care needs to be taken that the skilled person or team is selected according to the technical problem to be solved rather than the solution proposed by the invention, where these differ. Consideration should also be given to whether the area of technical knowledge of the skilled person is different when assessing obviousness and sufficiency, a possibility that has been examined by the English courts and the TBA.

B. Common General Knowledge The common general knowledge attributed to the skilled person or team at the priority date of a patent again differs slightly in terminology and identity in the national courts and the EPO. The Boards again provide a useful starting point: … common general knowledge is to be found in basic handbooks, monographs, encyclopaedias, textbooks and reference books. It is knowledge that an experienced person in the field in question is expected to have, or at least to be aware of, to the extent that he knows he could look it up in a book if he needed it.

This definition should be read broadly; the common general knowledge is not limited to information that is specifically documented – it may be the unwritten ‘mental furniture’ of the skilled person. Indeed, the common general knowledge does not usually include patents and scientific papers, unless these show that the subject matter was generally known in the art at the relevant date; and, that it was generally accepted or regarded as a good basis for further action. The English courts have considered whether there is a second category of common general knowledge, which consists of documents that the skilled person would quickly identify in a literature search. This idea reflects in particular the availability of digital databases. Latterly, the English courts seem to have adopted the more restrictive, and traditional, view that documents found in this way must nonetheless be widely read and widely accepted, rather than merely distributed widely, if they are to conform with common general knowledge – what and what are not routine steps for the skilled person to take is a matter of obviousness. The point may be contentious: the TBA appears to accept that the contents of databases are common general knowledge, providing the database is known to the skilled person as an adequate source of the required information, it can be retrieved without undue burden and it is retrievable in a straightforward and unambiguous manner, which appears to be a more inclusive threshold; the German approach even more so.

2 Scope of Protection of Patent Claims I. Statutory Basis Article 69(1) of the European Patent Convention (EPC) governs the scope of the protection conferred by European patent claims and their interpretation. The scope of protection is determined by the claims. The description and drawings are used to interpret the claims. Article 69 must itself be understood according to the Protocol on Interpretation of Article 69 of the EPC (the ‘Protocol’). Article 1 of the Protocol states: Article 69 should not be interpreted in the sense that the extent of the protection conferred by a European Patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties.

The Protocol requires that a middle-way is found between the two extreme approaches that it describes. One extreme adopts a literal approach in which the words used in the patent are either: restricted to their meaning, as interpreted by the patent and surrounding circumstances (contextual); or, alternatively, ‘the meanings assigned to the words by a dictionary and to the syntax by a grammar’ (acontextual).1 According to this approach, the words used by the patent draftsman are intended to mark out the claims of the patent precisely. This approach provides the reasonable degree of certainty to third parties that the Protocol refers to. But it also risks an injustice to the patentee if something they thought they had claimed is excluded by a strict and unforgiving construction of the language of the claim. The other extreme is liberal: the wording of the claims is only taken as a guideline, to be read together with the specification and drawings. It aims to identify the ‘inventive concept’ that the patent protects. This approach will provide ample protection for the patentee, but it leaves third parties in doubt as to the activities that may infringe. The difficulty in applying the Protocol is finding the middle way between these two approaches: ‘Like the hippopotamus, the median position is difficult to define but the hope is that the man skilled in the art will recognise it when he sees it.’2 A particular concern with the literal approach is that it is likely to exclude immaterial variants, otherwise referred to as ‘equivalents’. An equivalent is generally understood to be a small variation of a product or process, which uses the patented inventive concept, but without literally

1 H

Laddie, ‘Kirin Amgen – the End of Equivalents in England?’ (2009) 40(1) IIC 3–38. 30.

2 ibid

General Principles of National Law on the Doctrine of Equivalents 21 infringing the language of the patent claim – the product or process lies outside the claim, strictly construed – ‘infringement by imitation’ as it is known in the Swiss statute. To expressly address equivalents, the Protocol was revised to add Article 2 in the EPC 2000: ‘… for the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims’.3 How ‘due account’ is given to equivalents in a clear and structured way goes to the central issue of how the scope of protection of patent claims should be determined. The approaches of the national jurisdictions to this issue are examined in this chapter.

II. Principles of Construction The task for the court is to determine what the person skilled in the art would have understood the patentee to have been using the language of the claim to mean. It follows that the court must first ascertain the nature of the skilled addressee and what the common general knowledge of that addressee would have been at the relevant time (see chapter one).4

III. General Principles of National Law on the Doctrine of Equivalents5 A. Denmark Pursuant to section 39 of the Danish Patent Act, the extent of protection conferred by a patent is determined by the claims. For the interpretation of the claims, the description may serve as a guide. Section 39 resembles Article 69(1) EPC and generally Danish courts determine the scope of protection very much in line with the principles laid down in Article 1 of the Protocol on the Interpretation of Article 69. The doctrine of equivalents is not codified in Danish law but has been adopted by the courts in the sense that the scope of protection of claims includes obvious modifications that have the same function and achieve the same technical result as those embodiments within the express language of the claim. Thus, while the literal wording of the claims is the central element when determining the scope of protection, the actual protection conferred by the claims may also comprise technically equivalent products. According to case law6 – which is

3 By the Munich Amendment Act to the European Patent Convention, 29 November 2000. 4 See Kirin Amgen v TKT [2005] RPC 9. 5 As regards the approach likely to be taken by the Spanish courts to the doctrine of equivalents, see para 97 of the Supreme Court in Actavis v Eli Lilly: ‘So far as Spanish law is concerned, it is common ground that the Spanish courts have followed the United Kingdom approach, which leads to the difficult question whether one should assume that they would follow this decision in modifying the Improver questions and in particular the second question. I incline to the view that judicial comity would tend to suggest that the Spanish courts would follow this court in modifying the Improver questions, not least because this appears to render the UK courts and therefore the Spanish courts more consistent with the German and Dutch courts, and no more inconsistent with the French and Italian courts.’ 6 The Danish courts have only applied the doctrine of equivalents in a few cases, see, eg, the Supreme Court’s decision in Dansk Elektrolyse v Guldager, case no 505/2005 (27 March 2009) (published in U.2009/1523H), the Supreme Court’s decision in Hedegaard v Hardi International, case no 38/2012 (19 November 2013) (published in U.2014/488H) and the High Court’s decision in AstraZeneca v KRKA, case no 528-16 (17 October 2018).

22 Scope of Protection of Patent Claims not very clear as to how to assess equivalence – it is generally assumed that a product may be considered technically equivalent, if: i) the essential feature(s) of the invention is found in the product; ii) the only differences concern less essential features; and iii) the differences are obvious to the person skilled in the art. It is also clear from existing case law that there is no infringement under the doctrine of equivalents if the equivalent product belongs to the prior art (see also section IV. below). Thus, in the leading Danish case on equivalence from 2009,7 the Supreme Court held that a patent, which related to a method for corrosion-proofing of a water system, and where the claim referred to a single water tank and the use of electrodes directly connected to an electrolysis power source, was infringed by a system with two water tanks and where the electrodes were directly connected to a power source. The Supreme Court stated ‘… that the used system falls within the scope of protection or is at least considered to be technical equivalent with the claimed invention’.

B. England and Wales i. The Introduction of a Doctrine of Equivalents The specific mention of equivalents in Article 2 of the Protocol in EPC 2000 was a source of interest in the UK, because at the time it was introduced a ‘doctrine of equivalents’ was not considered a part of the law. Shortly before Article 2 came into force, but aware that it was coming, the House of Lords had held that Article 69 EPC ‘shuts the door on any doctrine which extends protection outside the claims’.8 Thus, any determination of scope of protection was considered to be limited by the claim language, with equivalents merely providing context.9 With the Actavis UK Limited v Eli Lilly and Company10 decision of the Supreme Court, this approach has changed. Actavis v Eli Lilly concerned European patent EP 1 313 508, claiming a combination of pemetrexed disodium with vitamin B12 for the prevention of the growth of tumours (see section V. below). Actavis sought declarations that its proposed pemetrexed diacid, pemetrexed dipotassium and pemetrexed ditromethamine products would not infringe this patent. The focus of the case was on the limitation of the language ‘pemetrexed disodium’ – does the scope of the claim nonetheless extend to pemetrexed dipotassium, pemetrexed diacid or pemetrexed ditromethamine? Overturning the lower court decisions, the UK Supreme Court held that there was direct infringement of the pemetrexed disodium claims by these alternatives. In doing so, the Court stated that direct infringement cannot be determined solely by whether a product or process falls

7 The Supreme Court’s decision in Dansk Elektrolyse v Guldager, case 505/2005 (27 March 2009) (published in U.2009/1523H). 8 House of Lords, Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46 (21 October 2004). 9 Per Lord Hoffmann, ibid, para 49: ‘Although Article 69 prevents equivalence from extending protection outside the claims, there is no reason why it cannot be an important part of the background of facts known to the skilled man which would affect what he understood the claims to mean. That is no more than common sense. It is also expressly provided by the new Article 2 added to the Protocol by the Munich Act revising the EPC ….’ 10 Supreme Court, Actavis UK Limited v Eli Lilly and Company [2017] UKSC 48 (12 July 2017).

General Principles of National Law on the Doctrine of Equivalents 23 within the language of the claim. Instead, equivalents must be taken into account as a second step. In each case, the court must therefore ask two questions: 1. does the variant infringe any of the claims as a matter of normal interpretation of the language used by the claims?11 and, if not, 2. does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial? If the answer to either issue is ‘yes’, there is infringement. This approach, the Court says, complies with Article 2 of the Protocol, because question 2 squarely raises the possibility of infringing equivalents, but limits their inclusion within the claim to those variants which are immaterial to the invention. It is also apparent that the Supreme Court believes this two-step approach balances the competing interests of the patentee with the need for clarity for third parties. As regards step 1, the correct approach remains that of purposive construction – what would the person skilled in the art have understood the patentee to be using the language of the claims to mean?12 Guidance on the interpretation of the language of the claims for this purpose is given by the Court of Appeal in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group Ltd: (i) the first overarching principle is that contained in Article 69 of the European Patent Convention; (ii) Article 69 says that the extent of protection is determined by the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short the claims are to be construed in context; (iii) it follows that the claims are to be construed purposively – the inventor’s purpose being ascertained from the description and drawings; (iv) it further follows that the claims must not be construed as if they stood alone – the drawings and description only being used to resolve any ambiguity. Purpose is vital to the construction of claims; (v) when ascertaining the inventor’s purpose, it must be remembered that he may have several purposes depending on the level of generality of his invention. Typically, for instance, an inventor may have one, generally more than one, specific embodiment as well as a generalised concept. But there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used: purpose and meaning are different; (vi) thus purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used. Hence the other extreme of the Protocol – a mere guideline – is also ruled out by Article 69 itself. It is the terms of the claims which delineate the patentee’s territory; (vii) it follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements; (viii) it also follows that where a patentee has used a word or phrase which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context; (ix) it further follows that there is no general ‘doctrine of equivalents’; (x) on the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged

11 Patents Court, Liqwd Inc & Anor v L’Oréal (UK) Ltd & Anor [2018] EWHC 1394 (Pat) (11 June 2018). Birss J notes, obiter, that the other judges of the English Patents Court have all expressed the view that the first step of the approach to construction in Actavis is purposive rather than literal. However, that approach, as set out by the House of Lords in Kirin Amgen, was already supposed to take account of equivalents. So, the judge sees scope for debate about whether the new first step approach is precisely the same as every nuance of the process of the determination of claim scope prior to Actavis. However, this seems to have been clarified by the Court of Appeal in Icescape Ltd v Ice-World International BV & Ors [2018] EWCA Civ 2219 (10 October 2018) (see below). 12 Court of Appeal, Icescape Ltd v Ice-World International BV & Ors [2018] EWCA Civ 2219 (10 October 2018).

24 Scope of Protection of Patent Claims infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context; (xi) finally purposive construction leads one to eschew the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge.13

The Guidance in Virgin Atlantic predates the authority of Actavis v Eli Lilly, and to some extent, for example in point (x), they overlap. However, with the exception of point (ix), specifically, Virgin Atlantic remains good law for construing the language of claims purposively.14

ii. Determining Immaterial Variants Further to introducing the second step 2, Actavis v Eli Lilly provides guidance on how to identify an immaterial variant equivalent to a feature of the claim. The Supreme Court does so by adopting, in amended form, a set of already existing tests – the ‘Protocol/Improver Questions’.15 These three amended questions – now routinely referred to as ‘Actavis Questions’ – are as follows: 1. Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, ie the inventive concept revealed by the patent? 2. Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention? 3. Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention? In order to establish infringement in a case where there is no infringement on the purposive construction (step 1), a patentee would have to show that the answer to the first two questions is ‘yes’ and that the answer to the third question is ‘no’. The Supreme Court suggests in Eli Lilly v Actavis that a variant is more likely to be immaterial if it is not a variant of part of the inventive concept claimed. On the facts of the Actavis case, the sodium cation was not judged part of the inventive concept, which is instead the administration of the pemetrexed anion together with vitamin B12. This observation becomes a touchstone of the Court of Appeal decision in Icescape Ltd v Ice-World International BV & Ors,16 which applies Actavis to hold that, had it not been invalid, the patent in question would have been infringed using the doctrine of equivalents, but not on a purposive construction (see section III.B.iii. below). To avoid the parties in a dispute tailoring the inventive concept17 to either include or not include the variant at issue, the court has stated in Kwikbolt Limited v Airbus Operations Limited18 that a correct assessment of the inventive concept cannot be achieved with the variant in mind.

13 Court of Appeal, Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group Ltd [2009] EWCA Civ 1062 (22 October 2009). 14 Patents Court, Garmin (Europe) Limited v Koninklijke Philips NV [2019] EWHC 107 (Ch) (29 January 2019). 15 See Court of Appeal, Wheatley & Anor v Drillsafe Ltd & Ors [2000] EWCA Civ 209 (5 July 2000). 16 Court of Appeal, Icescape Ltd v Ice-World International BV & Ors [2018] EWCA Civ 2219 (10 October 2018). 17 As to whether the meaning of the inventive concept differs in the context of equivalents, entitlement and obviousness, see BDI Holding GmbH v Argent Energy Ltd [2019] EWHC 765 (IPEC) (27 March 2019), in which HHJ Hacon states: ‘If the meaning given to ‘inventive concept’ differs at all as between [them], it is not by much.’ 18 [2021] EWHC 732 (IPEC) (25 March 2021).

General Principles of National Law on the Doctrine of Equivalents 25 The correct identification of the inventive concept must be done through the eyes of the skilled person, who has no notion of what the variant is. The skilled person has only the relevant claim, the specification as a whole and his or her common general knowledge to work with. Only after the inventive concept has been identified does the variant and with it the integer(s) in issue come into play so that the three Actavis questions (the reformulated Improver questions) may be considered.

iii. The Inventive Core of the Patent In Icescape, the problem addressed by the patented invention was that the installation and dismantling of conventional ice-rink coolant systems requires all of the various components to be assembled and then disassembled; a laborious, relatively time consuming and expensive process. Leakage could also occur as a result of the need to assemble all of the different components, causing delay. The invention of the patent addressed this problem by providing a cooling member for an ice rink which can be installed and dismantled rapidly, and which allows the rink to be made with different surface areas. The claimed cooling system comprised a feed manifold and a discharge manifold, a number of longitudinal pipes connected to the manifold at one end and via a connector at a second end, so that a fluid path is formed from the feed manifold to the discharge manifold via the longitudinal pipes, as shown in Figure 2.1. The various pipes of the invention are connected to one another in a fluid-tight manner via flexible joint members. It is these flexible joint members that allow the connected pipe sections to fold relative to each other for the purposes of transportation. In particular, the feed and discharge manifolds are described in the patent to ‘extend in the extension of one another in the transverse direction’ and are ‘provided with a coupling member (47, 48) to make a fluid-tight connection between the respective feed and discharge manifolds of the first and the second element’. In other words, the manifold pipes are connected in series in the patent. It was this feature, in particular, in integers D and E of claim 1 of the patent, that Icescape argued was not present in its ice-rink cooling system. Although there were foldable joints between the pipes in the Icescape system, by contrast to the patent the feed and discharge manifolds of Icescape’s system were configured in parallel, as shown in Figure 2.2. Figure 2.1 The cooling system claimed in Icescape

26 Scope of Protection of Patent Claims Figure 2.2 The defendant’s cooling system in Icescape

The Court of Appeal agreed that on a purposive reading of the two integers D and E, in light of the teaching of the specification and the common general knowledge, the two manifolds of the invention connect together in series so that the fluid does not leak as it flows between them from one to the other. This was not the same as the parallel configuration of the manifolds in the Icescape system. The Court then turned to what it called the ‘Actavis Questions’: a. Actavis Question 1 Does the icescape system achieve the same result in substantially the same way as the patented invention? On this question, the Court had regard to the problem underlying the invention and the patent’s inventive concept or ‘core’. The inventive core of the patent was the provision of a joint member. This forms a connection between the rigid pipe sections which are fluid-tight and flexible and allows the connected pipe sections to fold relative to one another for the purposes of transportation. In the court’s judgment it was this feature which made the patented system different from the conventional systems in the common general knowledge. By contrast, integers D and E were simply common general knowledge ways of implementing that invention. Focusing on the inventive core, the court was satisfied that the variant achieved the same result in substantially the same way as the invention. It satisfied the aims of the patent: to provide a cooling member which can be installed rapidly and is reliable in operation; with which it is possible to proceed rapidly to the ice-forming stage; and, with which a mobile ice-rink can be made with a large number of different surface areas. Whilst it was true that the Icescape system had a parallel rather than a series connection between the manifolds and that this may confer certain advantages as well as disadvantages, this had nothing to do with the inventive core of the patent. The first Actavis Question was answered in the affirmative. b. Actavis Question 2 Would it be obvious to the person skilled in the art, reading the patent and knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention? The Court answered this question in the affirmative. Indeed, the Court thought the variant would achieve the same result in precisely the same way.

General Principles of National Law on the Doctrine of Equivalents 27 c. Actavis Question 3 Would the skilled reader of the patent conclude that the patentee nonetheless intended that strict compliance with the literal meaning of the claim and, in particular, features D and E, is an essential requirement of the invention? The Court stated that the fact that the language of the claim does not cover the Icescape system is not enough to justify holding that it does not satisfy this question. It must also be considered whether integers D and E are an essential part of the invention. Here, the court had regard again to the inventive core of the patent (see also section III.A. Denmark). Because the inventive core of the patent had nothing to do with the coupling of the elements together or whether the fluid flows through them in series or in parallel, the court answered this question ‘no’. The doctrine of equivalents is now embedded in the approach taken to scope of protection of claims in infringement cases by the UK courts.19 Further decisions have clarified that where the doctrine is to be argued it must be specifically pleaded in the Particulars of Infringement,20 and that it is an objective question – it is not a necessary part of the court’s function in answering that question to make a decision about the defendant’s intention; in that sense whether the defendant copied the invention or not does not establish infringement, but it may be relevant to prove the element of the doctrine of equivalents that is in issue.21

C. France Article 69 EPC, as amended by EPC 2000, is codified in French law.22 The doctrine of equivalents is not codified but has been widely adopted and understood by the French courts to mean that the scope of protection of claims includes variants that are of different form from those embodiments within the express language of the claim but which have the same function and achieve the same result.23 Case law applies the doctrine of equivalents regularly, even more so given claims that are drafted with reference to the function performed by the means claimed. The three qualifying criteria for equivalence have recently been re-stated by the Supreme Court:24 i) the novelty of the function claimed in the patent; ii) the means, even with different forms, perform the same function; iii) in order to obtain the same result. For the doctrine to apply in France, therefore, the court must first assess whether the function of the patented means is new,25 meaning not in the state of the art at the day of filing or priority.26 If the function is already known to the art, the scope of protection is limited to the patented means. 19 Including the Court of Session, see Reactec Limited v Curotec Team Limited [2020] CSOH 77 (31 July 2020). 20 See Facebook Ireland Ltd v Voxer IP LLC [2021] EWHC 657 (Pat) (19 Mar 2021). 21 VIIV Healthcare Company & Ors v Gilead Sciences & Ors [2020] EWHC 615 (Pat) (10 March 2020). 22 Art L 613-2 first § of Intellectual Property Code. 23 Cass. Com. Corino macchine SNC v M. X, 91-20417 (26 October 1993); Cass. Com. Norman v Stork Nijhuis BV, 94-13790 (16 January 1996); Cass. Com. M. X v M. Y, 02-18650 (31 March 2004); Cass. Com. Groupe Vicard v Sté Tonnellerie Sylvain et Sté Tonnellerie Ludonnaise, 10-30907 (2 November 2011). 24 Cass. Com. Rabaud v Société d’équipement pour l’environnement (SEE), (27 June 2018), pourvoi no°16-20.644. 25 Cass. Com. B2M Industries v Acome, 06-17915 (20 November 2007), and Cass. Com. SA Bourgeois v SA PIMAS ORTHOPEDIE, Société BRAUN CORPORATION, 05-21452 (26 February 2008). 26 CA Paris, k. Hartwall OY AB v SAS Touraine Emballage Recyclage, 15/12176, (28 November 2017).

28 Scope of Protection of Patent Claims An example is the claim to detect HIV with a particular DNA fragment probe, using a specific means of DNA/RNA hybridisation.27 French judges considered that the function (detection of HIV) of the patented means (DNA/RNA hybridisation) was known to the art at the priority date. It followed that the claim could not be interpreted as protecting other methods of hybridisation that are not claimed but achieve the same function but the specific patented means of hybridisation. The ‘same function’ criteria is the other key element of the doctrine of equivalents. Indeed, differences between the infringing product and the claimed product do not matter if those differences relate to an element which performs the same first technical function as the one of the invention. Once the means have the same function, equivalent means must produce results of the same nature. This third condition is, however, unclear as regards degree or quality. Courts mentioned either that the result shall be ‘identical’28 or ‘identical or similar’,29 or ‘of the same nature if not of the same degree’30 and even ‘imperfect’ due to a lack of know-how.31 Consequently, it appears that in order to assess infringement by equivalents, one should concentrate on the sole means which has a different form in the product in question in relation to the patented invention. Then, it is necessary to compare the function – the primary technical effect32 – of this sole means to the function of the means of the patent. It is only in the event of a reproduction of the function of the means of the patent by a means of the product, that the results of these two means will be examined. The Supreme Court only controls the characterisation of the equivalence of the means. Indeed, the judge does not have to consider whether the replacement of the means was obvious to the skilled person in the art, nor to examine the patentee’s intention when drafting the claims, or in the context of the examination.33

D. Germany The principles developed by the German Federal Court of Justice place the claims as the decisive basis for determining claim construction – the extent of protection must align with the claims.34 However, because claims must include equivalents, further to Article 2 of the Protocol, it is not possible to provide the optimum of certainty for third parties in the way that would be provided by literal attention to claims. For this purpose it must be determined whether: the objective person skilled in the art using their expert knowledge, on the basis of considerations linked to the meaning of the claims – that is to the invention described therein – is able to arrive at the modified embodiment as having the same effect for the purposes of solving the problem underlying the invention.35 Whether the variant is equivalent in Germany is determined according to the

27 Cass. Com. Institut Pasteur v Chiron Healthcare S, 09-15668 (23 November 2010); compare Cass. Com. B2M Industries v Acome, 06-17915 (20 November 2007) in which a means was found to be equivalent to a novel integer because it performed the same function and produced the same result as that claimed in the patent. 28 CA Paris 5.1, SARL Complemen’hair v Société Complément hair, 17/01202 (4 December. 2018); Cass. Com. Rabaud v Société d’équipement pour l’environnement (SEE), 16-20.644 (27 June 2018). 29 CA Paris, 15/12176 (28 November 2017). 30 CA Paris, 17/06356 (16 October 2018). 31 Cass. Com. Société Muller v Société Carrera et Société Texas de France, 16-28322 (23 January 2019). 32 Mathely, Le nouveau droit français des brevets d’invention, (Librairie du journal des notaires et des avocats, 1991) 118. 33 J Azéma and J-C Galloux, Droit de la propriété industrielle, 7th edn, (Paris, Dalloz – Precis, 2012) 444 and CA Paris, 88.18686 (31 May 1990). 34 P Meier-Beck, ‘The Scope of Protection – the Test for Determining Equivalence’ (2005) 36(3) 'ICC 339–44. 35 BGH, Formstein X ZR 28/85 GRUR 1986, 803 (29 April 1986); BGH Ionenanalyse, GRUR 1988, 896.

General Principles of National Law on the Doctrine of Equivalents 29 approach exemplified by Schneidmesser I.36 This requires a positive answer to be given to each of the following three steps (sometimes referred to as the ‘Schneidmesser Questions’):37 1.

Does the modified embodiment solve the problem underlying the invention with means that have objectively the same technical effect/advantage? 2. Was the person skilled in the art, using his specialist knowledge, able to find the variant at the priority date as having the same effect? 3. Are the considerations which the skilled person takes into account for the variant in the light of the meaning of the invention close enough to the considerations taken into account for the literal solution protected by the claims, such that the skilled person will consider the variant as a solution which is equal/equivalent to the literal one?38 As regards step 1, the more broadly the advantages/effects of the invention can be defined, the broader the scope of protection. These effects must be determined by interpreting the patent. Furthermore, it is not only the intended overall effect of the invention that must – at least essentially – be achieved, but also the effects of every single feature of the claim. The effects of the features may be more specific, but they must also be achieved by the variant to a practically relevant extent. For those rare cases in which a positive answer to the first three questions extends the scope of protection to a variant which is obvious or lacks novelty with regard to the prior art, a fourth question (the ‘Formstein39 objection’, a relation to the Gillette defence in England and Wales and the Netherlands) is applied – this must be answered in the negative in order to guard against over-extending the scope of the claim: 4. Does the variant, having regard to the state of the art, lack novelty or is the variant obvious to a person skilled in the art? The use of this defence is limited and difficult to apply. This is because, due to the bifurcated nature of proceedings in Germany, the defendant must use prior art that is specific to the variant in question and does not raise issues about the validity of the claimed subject matter. If the prior art is relevant for the claimed subject matter and not only for the variant, the defence can only be raised in nullity proceedings. Also, arguments regarding the ‘Formstein objection’ may affect the question of equivalence: arguing obviousness may at the same time provide support for the requirement of findability.40 The German courts have placed limitations on the doctrine of equivalents. The Federal Court of Justice in Okklusionsvorrichtung,41 and in Diglycidverbindung,42 strengthened the applicant’s 36 Indeed, the decision Schneidmesser l X ZR 168/00 GRUR 2002, 515 is only one of a series of BGH decisions that were delivered on 12 March 2002 that identically phrased the questions. The decisions are Kunststoffrohrteil X ZR 43/01 GRUR 2002 511; Schneidmesser II X ZR 135/01 GRUR 2002 519; Custodiol I X ZB 12/00 GRUR 2002 523 and Custodiol II X ZR 73/01 GRUR 2002 527. Schneidmesser I is usually regarded as the lead decision. 37 See, eg, P Meier-Beck, ‘Aktuelle Fragen der Schutzbereichsbestimmung im deutschen undeuropäischen Patentrecht’ [2003] GRUR 907 and K Grabinski ‘‘Schneidmesser’ versus ‘Amgen’ Zum Sinn oder Unsinn patentrechtlicher Äquivalenz’ [2006] GRUR 716. 38 Schneidmesser I as translated into English by P Meyer in F Van Helsen et al, Europe’s Courts Converge on Non-literal Infringement Managing Intellectual Property, Life Sciences Focus, Supplement, 2005; Meier-Beck (n 34) 343 offers a different translation: ‘Are the considerations that the person skilled in the art had to apply oriented to the technical teaching of the patent claim in such a way that the person skilled in the art took the variant into account as being an equivalent solution?’ 39 BGH, Formstein X ZR 28/85 GRUR 1986 803 (29 April 1986). 40 T Kühnen, Handbuch der Patentverletzung (Heymanns Verlag GmbH, 2021) ch. A, 222; M Haedicke and H Timman, Handbuch des Patentrechts, (Beck C.H., 2020) s 3, 202. 41 BGH, Okklusionsvorrichtung X ZR 16/09 GRUR 2011 701 (10 May 2011). 42 BGH, Diglycidverbindung X ZR 69/10 GRUR 2012 45 (13 September 2011).

30 Scope of Protection of Patent Claims responsibility to clearly formulate their patent claims and defined tighter requirements for patent infringement under the doctrine of equivalents. In particular, the Federal Court of Justice has pointed out that: in cases of contradiction between the claim language and the patent description, in particular in the case of a specific selection by the claim language for only one embodiment out of several embodiments described in the patent specification, the person skilled in the art will consider this selection when assessing equivalence under Schneidmesser Question 3 – embodiments not selected in the claim language do not fall within the scope of protection of the patent and there is no infringement under the doctrine of equivalents. In its Pemetrexed43 decision, the Federal Court of Justice has subsequently limited the application of this rule (see also section VIII.). According to the Federal Court of Justice, a selection decision – which excludes patent infringement under the doctrine of equivalents – can only be assumed if the selection was made to distinguish the invention from prior art. The specifically disclosed but not claimed embodiment is disclaimed. However, this rule does not generally apply in cases where the specification points to other possible, but not specifically disclosed, embodiments without claiming them. In these cases a conscious decision of the patentee to select an embodiment can only be assumed on the basis of the circumstances, for example if the claimed embodiments have specific advantages that distinguish them from other possible, but not claimed embodiments. Pemetrexed therefore presents a wider doctrine of equivalents than the more limited scope it was thought to have on the basis of Okklusionsvorrichtung.

E. Italy i. The ‘Essence of the Invention’ to the ‘Originality Test’ The doctrine of equivalents is specifically mentioned in the third paragraph of Article 52 of the Intellectual Property Code (IPC), which sets out that ‘in determining the scope of exclusivity granted by a patent account must be taken of any element equivalent to an element contained in the claims’. However, the IPC does not provide additional guidance as to the exact meaning of the term equivalent and on how equivalency should be determined. In the absence of any instruction, it is therefore necessary to continue relying on the case law (not binding as usual in civil law countries) that the courts developed and applied before the codification of the doctrine of equivalence and that continue to evolve. One of the earliest decisions applying the doctrine of equivalence dates back to 1958 by the Italian Court of Cassation in Vittorio Arduino v Officine Faema.44 The criterion applied by the Court of Cassation for the assessment of infringement based on equivalents was that to infringe the claim of a patent: it is not necessary to precisely reproduce and apply the inventive idea in all its elements, even accessory or secondary, it being sufficient to work the elements which are essential and characteristic of said idea, in the absence of which it would be impossible to obtain the new industrial result substantiating the invention.

Therefore, once the invention is imitated and exploited in its industrial result, which constitutes the essence and practical purpose of the invention, the infringement subsists even when

43 ibid.

44 Court

of Cassation, 24 October 1958, No 3443.

General Principles of National Law on the Doctrine of Equivalents 31 the invention was subjected to modifications constituting mere mechanical equivalents of its constituent elements. Following the codification of the doctrine of equivalence in Article 52, third paragraph IPC, Italian courts have developed a non-uniform approach in determining whether a specific embodiment infringes a claim by equivalents. The courts have sometimes applied the triple test developed by the US case law, sometimes the so called ‘originality test’ that represents an evolution of the criterion illustrated in the Vittorio Arduino case of 1958. As detailed in a decision by the Court of Cassation in Proras srl v Ades et al,45 the language used by Article 52 IPC sets aside the theory of the ‘essence of the invention’. Such theory leaves too much discretion in the assessment of the equivalence and Article 52 requires an approach based on the clear and precise identification of the limits of the scope of protection granted to a patent. In Proras, the Court of Cassation attempts to identify such an approach by relying on what it regards as the two main tests to assess equivalence. In doing so, the Court offers a concise recap of the triple test, according to which there is infringement by equivalents if the allegedly infringing device or process performs substantially the same function in substantially the same way to obtain the same result, and of the originality test. Although the court does not discard the triple test, it makes clear that ‘the case law of this court [the Court of Cassation] has subscribed to this second approach [the originality test] in many decisions’, thus expressing a clear preference for the latter.

ii. The ‘Originality Test’ as the preferred, but not Exclusive Test In Proras, the Court of Cassation annulled the judgment of the Court of Appeal of Bologna and sent the matter back to the Court of Appeal instructing it to issue a new judgment in the light of the doctrine of equivalence. The analysis of the directions addressed to the Court of Appeal is extremely useful in understanding the current law on infringement by equivalents. For the purpose of the analysis, the instructions can be split in the following parts that will be separately examined. 1. In the matter of patent infringement by way of equivalents, the judge must not restrict his analysis to the literal language of the claims, construed in the light of the description and drawings. 2. The Court must strike a balance between a fair protection of the patent holder and a reasonable legal certainty of the third parties and, therefore, must take into account each element substantially equivalent to an element contained in the claims. 3. To do so, the Court can avail itself of different methods to assess the equivalence, such as 4. Ascertaining if the device or process accused of infringement achieves the same final result. 5. By using variants that, in the light of the invention, are deprived of originality for the skilled in the art called to solve the same problem. 6. And excluding any relevance to the statements made by the patentee during the prosecution of the patent. Moving to the analysis of the instructions, points 1 and 2 consists of a mere repetition of the content of Article 52 IPC and its rationale. Point 3 is both relevant and a source of concern. Although the Court expressed a preference for the originality test described at points 4 and 5,

45 Court

of Cassation, 7 February 2020, No 2977.

32 Scope of Protection of Patent Claims it makes clear that the court of appeal can also use other methods to assess equivalence. This does not appear a satisfying solution. In its judgment, the Court of Cassation refers to the triple test as an alternative that, although the Court never applied, it appears theoretically applicable and to the ‘essential elements of the inventive solution’ as a no longer applicable method. This seems to indicate not only that the Court of appeal could apply the triple test and should not apply the test based on the so-called ‘essence of the invention’, but also that it could apply any other test not specifically rejected by the Court of Cassation.46 Occasionally, lower courts do still apply the triple test.47 Points 4 and 5 describe the originality test that is the method recommended by the Court and that presents some similarity to the test developed in Germany by the BGH. To apply the originality test, the court must first ascertain if the accused product or process ‘achieves the same final result’. If the answer is positive, then the next question is whether variant or variants are original vis-à-vis the patented invention in the eyes of the skilled in the art. The Court does not clarify if the originality of the variant must be assessed in the same way in which the inventive step of an invention is assessed in the light of the closet prior art, where the closest prior art, in this case, would be the asserted patent. While the answer appears to be positive this solution does not clarify all potential questions such as, for example, if the originality must be assessed by the skilled person with respect to knowledge available at the time of the priority of the asserted patent or at the time of the first infringement.

F. The Netherlands i. The ‘Essence of the Invention’ to the ‘Inventive Concept Behind the Wording of the Claims’ Historically, in the Netherlands, the approach followed to determining the scope of claims was the Supreme Court decision in Philips v Tasseron,48 which had a strong focus on the ‘essence of the invention’ (‘het wezen van de uitvinding’) and therefore provided broad protection for the patentee. The Supreme Court has over the years slowly moved away from this approach. For example, in 1995, in Ciba-Geigy v Oté Optics,49 the Supreme Court changed its emphasis from the essence of the invention to the ‘inventive concept behind the wording of the claims’ (‘de achter de woorden van de conclusies liggende uitvindingsgedachte’). There were four factors which the Supreme Court, in Ciba-Geigy vs Oté Optics, ruled must be used to assess the scope of protection: 1.

in interpreting the terms of the claims, the court is to determine the essence of the invention; in other words, consider the inventive concept behind the wording of the claims;

46 Although the Court of Cassation has never explicitly rejected the triple test, it has never shown any inclination to apply it. In Industriale Chimica v Bayer (Court of Cassation, 2 December 2016, No 24658) the Court dismissed an application for annulment of a judgment by the Court of Appeal of Turin based on the argument that the court in assessing the infringement by equivalents did not apply the triple test. The Court of Cassation did not state that the triple test was not the proper law, but made clear that the originality test applied by the Court of Appeal is the in line with the approach of the Court of Cassation. The triple test is an old test developed in the US which has no basis in the text of the IPC. However, the Court fell short of stating that the triple test is not. 47 Tribunal of Milan (PI), 15 October 2018 No 45209. 48 Hoge Raad, Philips v Tasseron NJ 1930/1217 (20 June 1930). 49 Hoge Raad, Ciba-Geigy v Oté Optics NJ 1995/391 (13 January 1995).

General Principles of National Law on the Doctrine of Equivalents 33 2. this interpretation then needs to be corrected to give a reasonable degree of certainty for third parties, which may sometimes justify a restricted, literal interpretation of the wording of the claims; 3. the skilled person may – with restraint – use the prosecution history file for the purpose of claim interpretation; 4. and all other circumstances of the case are to be taken into account, including the possible breakthrough nature of the invention (justifying a broader scope). When considering factors 2 and 3, poor drafting of the patent may be construed to be to the patentee’s disadvantage.50

ii. Essence of the Invention is a ‘Viewpoint’ This continues to be the approach of the Supreme Court, although it has more recently clarified that the essence of the invention is a ‘viewpoint’ rather than the ‘starting point’ by which scope of claims must be determined.51 In practice, over the years, the lower courts have tended towards an approach that distinguishes literal infringement from non-literal infringement by equivalents. To assess non-literal infringement the courts often used: the ‘function-way/means-result’ test:52 does the non-literal variant fulfil the same function as the patented one, by using similar means, leading to a similar result, which is in essence the first Protocol/Improver question; or, the insubstantial differences test (more easily applied to chemical and biochemical cases), which assesses whether the differences between the allegedly infringing article or process and the claim are material? In applying these tests the Court takes care that any protection outside the literal wording of the claims does not go outside the invention (and as such the approach remains in line with the Supreme Court). However, concerns about providing certainty for third parties have persisted and for some years it had become rarer to see cases in which infringement is held on the basis of equivalence (this changed with the pemetrexed case, see section VIII.).

iii. The Dutch Approach Confirmed in AstraZeneca/Resolution In the Netherlands the latest Supreme Court judgment on scope of protection dates from 2018 and was decided in the case of AstraZeneca/Resolution,53 but this judgment mainly reiterates the rules established in Bayer/Sandoz (2016).54 Bayer held two European patents for a method of preparation of drospirenone, the active ingredient in Bayer’s contraceptive pill sold under the brand name Yasmin. Sandoz attempted to market a generic version of Yasmin, EE/DRSP Sandoz, prior to patent expiry. This attempt was not successful. Sandoz then developed a workaround with respect to both patents: it used an organic compound named TEMPO as a catalyst instead of using a salt of ruthenium and it did not separate water by adding pTSA as was subject to patent protection, but with the weak base pyridine with water. Bayer sued Sandoz for infringement in preliminary injunction proceedings, on the basis that the workaround method was equivalent to the claimed method. The preliminary injunction judge dismissed this claim. The Court of Appeal 50 The approach is clarified by the Hoge Raad in Van Bentum/Kool NJ 2002/530 (29 March 2002) to say that the skilled person can only assume that the patentee has surrendered a part of the patent protection if there is a ‘proper ground’ to do so. 51 Hoge Raad, Lely/Delaval C06/054HR (7 September 2007); AGA v Occlutech 11/00304 (25 May 2012); Medinol v Abbott 13/00522 (4 April 2014). 52 Hoge Raad, Dreizler v Remeha NJ 1995, 392 (13 January 1995). 53 Hoge Raad, AstraZeneca/Resolution NJB 2018/1195 (8 June 2018). 54 Hoge Raad, Bayer/Sandoz 5 NJB 2016/496 (February 2016).

34 Scope of Protection of Patent Claims agreed, ruling that the skilled person would assume Bayer had knowingly chosen to claim the ruthenium salt and therefore that the scope of protection does not extend to use of the variant TEMPO. With respect to the second patent the Court of Appeal decided that the skilled person would understand the patent to be limited to only the use of the specific acid pTSA, which would exclude from the scope of protection the use of other products such as pyridine with water. The case was appealed to the Supreme Court to rule on whether the Court of Appeal applied the law correctly. Advocate-General Van Peursem advised the Supreme Court to again dismiss the claim. In doing so, the Advocate-General reiterated that the Supreme Court must apply a ‘contextual interpretation of the claims’ in which the ‘idea behind the invention’ is a view point as is the literal meaning of the claims. However, these two viewpoints are the two ‘extremes’ referred to by the Protocol which should be avoided. One should seek a balance between the honest protection for the patentee as well as a reasonable degree of legal certainty for third parties. The description and the drawings are an important source to establish the ‘idea behind the invention’. All prior art (referred to in the description or not) could be of importance since the perspective of the skilled person (with their knowledge of the prior art) is key to applying a ‘contextual interpretation of the claims’. Bayer argued that the Court of Appeal had been wrong to rule that the skilled person would assume the claim to the ruthenium salt to have been knowingly chosen, limiting the scope of protection. Instead, it submitted that an equivalent can only be excluded if there is a reasonable ground to assume that the patentee had knowingly renounced protection for it. The Supreme Court did not agree, and held that the Court of Appeal had been correct to take into account the skilled person’s perspective on a number of factors: the contents of the patent, the prior art, the objectives of the claimed method, the additional advantages of this method, the knowledge of existence of the involved products, the nature of and the relationship between those products, the degree and the way in which these products would lead to the result. There is a normal ‘purposive claim construction’ and there is the question of protection for equivalents beyond the meaning of the claims. This two-step approach is followed by the Court of Appeal in proceedings on the merits in the pemetrexed case.55 In the first step one has to determine whether the allegedly infringed product falls within the normal scope of the protection of the claims. This means not a merely literal meaning, but an interpretation of the claims by the skilled person in light of the description and the drawings of the claims. If not all features of the claims can be found in the allegedly infringing product, one applies the second step. In the second step one determines whether there is infringement by equivalence. The Court of Appeal has formulated four questions: i) ii) iii) iv)

From a technical point of view is the missing feature comparable to the claimed feature? In light of fair protection for the patentee, should one take into account equivalents? In light of legal certainty for third parties, should one take into account equivalents? Is the equivalent variant itself new and inventive in light of the prior art?

G. Sweden According to Section 39 of the Swedish Patents Act,56 the scope of protection of a patent must be determined by the patent claims and when constructing patent claims, the description may 55 Gerechtshof Den Haag, Eli Lily & Company v Fresenius Kabi Nederland BV, 200.261.833/01, ECLI:NL:GHDHA: 2020:2052. 56 SFS 1967:837.

General Principles of National Law on the Doctrine of Equivalents 35 serve as a guide. Article 69 and the Protocol on Interpretation of Article 69 must be considered in cases where questions regarding the scope of the patent is discussed.57 The scope of protection of a patent must be determined in light of the central inventive idea, as it appears from the patent, taking into consideration the prior art available at the date of filing of the patent application, or if applicable, the priority application. Under Swedish case law, infringement under the doctrine of equivalents may be at hand if the following criteria are met:58 i) the inventive idea is fully utilised;59 ii) the infringing product achieves the same technical effect as the invention; iii) the distinguishing feature(s) used in the infringing device is/are considered to be an obvious alternative to the skilled person; and iv) the solution of the infringing product is technically equivalent to the solution according to the patent (solves the same technical problem). Even if the requirements set out above are met, there are several factors that could exclude infringement under the doctrine of equivalents, for example:60 i)

The character of the invention – in particular its distance to prior art (in this regard it is the contribution of the invention that shall be assessed, not whether or not the invention is ‘simple’). Hence, a so-called pioneer invention can enjoy a significant protection under the doctrine of equivalents, while the possibility to apply said doctrine is very limited for inventions which comprise a design solution which lies close to prior art.61 ii) If a deliberate limitation of the distinguishing feature has been made during examination, opposition, an administrative limitation procedure or in court proceedings in order to distance the invention from prior art (which otherwise could have anticipated the invention or rendered it obvious). It is considered to be unreasonable if the scope of protection of the invention would encompass something that the patentee explicitly has chosen to carve out in order for the invention to be considered novel/inventive. Limitations made for other purposes (such as to avoid lack of clarity or a remark on added matter) do not affect the assessment (see section V.).62 iii) If the feature that distinguishes the invention from the infringing product is essential or stated as particularly preferred in the description of the patent. Thus, even if the four criteria in favour of infringement by equivalence are at hand, special circumstances in the individual case may exclude infringement.

57 Swedish Government Bill 2006/07:56, 83 f. As regards construction of patent claims in general, the Swedish Supreme Court has in NJA 2000, 497 (Comviq GSM AB v Europolitan AB) underlined that even if there is no requirement that national law shall follow the case law of the EPO, it is desirable that a national court, as far as possible adjust to the case law from EPO. Likewise, the Supreme Administrative Court has in RÅ 1990 ref. 84 stated that Swedish case law shall, to the extent possible within Swedish law, shall take into consideration the case law from EPO. 58 Patent and Market Court of Appeal, Suomalaiset Raha-Automaatit Payazzo Finland Oy AB v Easypark AB case no PMT 744-16 (17 November 2016). 59 Supreme Court NJA 2000, 497 (Comviq GSM AB v Europolitan AB). In said case, the Supreme Court did not consider that the inventive idea was use. 60 Patent and Market Court, Eli Lilly v Actavis, case no PMT 2097-15 and PMT 6191-17 (31 January 2018) and Patent and Market Court, Eli Lilly v Fresenius, case no PMT 1248-18 and PMT 1090-19 (11 December 2020). 61 Patent and Market Court of Appeal, Suomalaiset Raha-Automaatit Payazzo Finland Oy AB v Easypark AB case no PMT 744-16 (17 November 2016), Supreme Court and Supreme Court, NJA 2002, s 660 (Eli Lilly v Ratiopharm). 62 See, eg, Svea Court of Appeal, AGA Medical Corporation v Occlutech GmbH, case no T 2980-11 (27 March 2013), Stockholm District Court, Brokk Aktiebolag v Husqvarna AB, case no T 11829-12 (15 January 2014).

36 Scope of Protection of Patent Claims

H. Switzerland The statutory basis of the doctrine of equivalents in the Swiss Patent Act is a half-sentence in Article 66(a) of the Patent Act. Pursuant to this provision, any person using the patented invention unlawfully may be held liable under criminal and civil law, whereby ‘imitation is also deemed to constitute use’. The doctrine of equivalents (or ‘infringement by imitation’ in the language of the statute) has been consistently understood to extend the scope of protection, beyond literal infringement, to also cover the ‘enrichment of the state of the art’ represented by the patented invention.63 Until recently, the doctrine of equivalents was decided based on the answer to two questions: 1. Do the replaced features have the same objective function? 2. Are the replaced features and their same objective function obvious to a person having ordinary skills in the art on the basis of the teaching of the patent?64 In the Drospirenone case in 2013,65 the Federal Patent Court considered, based on detailed considerations of comparative law, in particular the German Schneidmesser I and II,66 as well as the UK Improver67 decisions, that an additional third question needs to be assessed in the equivalence test: 3.

Would the skilled person, based on the claim language and the description, have considered the replaced features as a solution of equal value.

For clarity and because of the ambiguity of the term ‘replaced feature’, the granted claim feature missing in the alleged embodiment will be hereafter referred to as the ‘claim feature’ and the feature that is accused of being equivalent to the claim feature will be referred to as the ‘replacement feature’.

i. First Question: Same Objective Function The replacement feature has the same objective function as the claim feature if it solves the technical problem of the invention with the same effect. The accused embodiment must show all effects that the claim features have, both individually and collectively, as understood by the skilled person. In other words, the first question must not be answered simply by a comparison of the individual effects, feature-by-feature, of the claimed invention with the accused embodiment, nor by a mere comparison of the collective effect of all granted claim features with the collective effect of the features of the accused embodiment.68

ii. Second Question: Accessibility Not long after Drospirenone, the Federal Patent Court clarified that the second question should not be confused with the assessment of inventive step. The starting point of the second question is

63 Federal

Supreme Court, BGE 98 II 325 Aerni SA v Vulcain et Studio (27 June 1972). Supreme Court, BGE 125 III 29 Sigg and Albanese v Mägert Bautechnik (9 December 1998). 65 Federal Patent Court, S2013_001 Drospirenone I (21 March 2013). 66 See section D. above 67 That is, prior to the modification of the questions by the UK Supreme Court in Actavis. See section III.B.ii. above. 68 Federal Supreme Court, BGE 143 III 666 Pemetrexed (20 October 2017) para 5.3.3. 64 Federal

General Principles of National Law on the Doctrine of Equivalents 37 not the state of the art, but the patent in suit. In other words, the second question does not relate to whether the replaced feature is inventive in view of the state of the art, but whether, Starting from the teaching of the patent in suit, it is evident for the skilled person that the replaced feature has the same effect.69

This rule is somewhat tempered by the requirement that the patent in suit must ‘prompt the skilled person based on the skilled person’s common general knowledge’ to replace the claim feature by the replacement feature. Common general knowledge can thus be decisive when answering the question whether the skilled person could expect the same effect by the replacement feature as by the claim feature. The same effect of the replacement features must be evident to the skilled person ‘without undue experimentation’, which also means that the skilled person may need to do some ‘reasonable experimentation’ in order to come to this conclusion.70 Does it matter whether the equivalent embodiment is itself patentable? The case law of the Federal Supreme Court appears to some extent contradictory on this issue. In Urinal valve, the Court considered that an embodiment that is inventive and thus worthy of patent protection can still qualify as an infringement under the doctrine of equivalents, as this would merely make it a dependent invention (ie, an invention in its own right, but which cannot be used without a licence in a prior invention).71 In Pemetrexed, the Court seemed to state the contrary, affirming that ‘if the modification is based on an inventive step, accessibility shall be excluded’.72

iii. Third Question: Equal Value The third question is directly inspired by the third ‘Schneidmesser’ and ‘Improver’ questions (see section III.B.ii.). It asks whether the skilled person, upon an objective reading of the patent specification, would conclude that the patentee intended to limit the scope of the claim in order to exclude equivalents that have the same objective function and that are accessible.73 The third question should not be answered in the negative too easily. The skilled person can and must assume only in particular circumstances that no patent protection is being claimed for embodiments that have – obviously so – the same objective function. In fact, the third question holds the patentee accountable for its own expressions of intent related to the scope of protection. Therefore, this question asks whether the patent specification can be understood by a skilled third party as an actual waiver of an embodiment by the patentee. In cases where the actual intent of the patentee is unknown, expressions of intent must be interpreted according to the ‘principle of good faith reliance’. Under this principle, the question is how a reasonable addressee of the expression of intent could and should have understood it in good faith. If a claim feature was amended in prosecution, the amendment must be understood in its context and with a view to its background. In particular, if an amendment was made to avoid a finding by the patent office of an unallowable amendment, as opposed to avoiding a finding of lack of novelty or inventive step, it cannot be understood as the waiver of an embodiment that is protected under the doctrine of equivalents.74 69 Federal Patent Court, O2014_002, Daspaco v von Allmen (urinal valve) (25 January 2016) and Federal Patent Court, O2015_004, Actavis v Eli Lilly (Pemetrexed) (9 March 2017). 70 Federal Supreme Court, BGE 143 III 666 Pemetrexed (20 October 2017) para 5.4.2. 71 In this case, however, the patentee of the dependent invention can sue for a licence to use its invention under the conditions set out in the Swiss Patent Act; Federal Supreme Court, BGE 142 III 772 Urinal valve (3 October 2016) para 6.4. 72 Federal Supreme Court, BGE 143 III 666 Pemetrexed (20 October 2017) para 5.4.1. 73 Federal Supreme Court, BGE 143 III 666 Pemetrexed (20. October 2017) para 5.5.1. 74 ibid, 5.5.4.

38 Scope of Protection of Patent Claims

IV. The Role of a ‘Formstein Defence’ In the UK, an important, but currently unresolved, question has arisen from the introduction of the doctrine of equivalents. This is, does it apply to patent claims in the context of determining validity objections, particularly novelty? If the answer is ‘no’, then the scope of claim of a patent that is used when determining these matters may differ, something that is inconsistent with the ‘Merrell Dow principle’75 – an infringing embodiment that post-dates the patent must necessarily anticipate the patent if it were of an earlier date. For this reason, a number of cases have discussed the use of a Formstein defence – borrowed from German law, as exemplified by the Schneidmesser I case76 (see section III.D. Germany), but found in other forms in a number of the countries discussed here – to reflect the Merrell Dow principle.77 However, all of these cases have so far been resolved without having to decide the issue, but they have left obiter opinion on how the defence may apply. In Technetix, for example, HHJ Hacon interprets the defence like this: One way of reconciling the Merrell Dow principle with the doctrine of equivalents would be to say that if an accused product or process is an equivalent and for that reason is nominally within the scope of the claim, but the equivalent would have lacked novelty or inventive step over the prior art at the priority date, then it is deemed to fall outside the scope of the claim, thus providing a defence to infringement.

The weight of obiter opinion on the issue was most recently added to by Birss LJ (at first instance) in Facebook Ireland Ltd v Voxer IP LLC, in which he states: So far the UK courts have recognised Formstein is a possible way forward … but no UK court has actually had to confront the issue. As things have turned out in this case, I do not have to do so either. However, if I did have to decide the matter, I would hold that the right approach is the Formstein approach so that the conclusion if the equivalent device lacks novelty or is obvious is that the claim scope must be confined to its normal construction in that respect. I would do so for two reasons. If the claim on its normal construction is valid, then it seems harsh to invalidate it on this ground. What else could the patentee do but write their claim in a way which, normally construed, did not cover the prior art. So that approach promotes certainty. Secondly, since it is clear that other EPC countries work that way, this is a reason in itself for this EPC state to take the same approach.

The defence is most likely to be relevant in cases where novelty only prior art (see chapter ten) has been brought within the scope of protection of claim by the doctrine of equivalents. To date, no such case has arisen in the courts.78

V. The Role of the Prosecution File In Actavis v Eli Lilly, the UK Supreme Court is sceptical about reliance on the prosecution file, but it sets out two situations in which it may be appropriate to use its contents: i)

the point at issue is truly unclear if one confines oneself to the specification and claims of the patent, and the contents of the file unambiguously resolve the point, or

75 [1996] RPC 76. 76 GRUR 2002, 515. 77 Technetix v Teleste [2019] EWHC 126 (IPEC) (29 January 2019); Emson v Hozelock [2019] EWHC 991 (17 April 2019) and Facebook Ireland Ltd v Voxer IP LLC [2021] EWHC 1377 (Pat) (26 May 2021). 78 See also, Optis Cellular Technology LLC v Apple Retail UK Ltd [2021] EWHC 1739 (Pat) (25 June 2021) anticipation by equivalence should be pleaded.

The Role of the Prosecution File 39 ii) it would be contrary to the public interest for the contents of the file to be ignored. This situation would be exemplified by a case in which the patentee has made it clear to the EPO that they are not seeking to contend that the patent, if granted, would extend its scope to the sort of variant which it is now claimed infringes. These two sets of circumstances are relatively narrow: the granted patent does not itself resolve the issue, and the file does; or there has been an express statement that the patent would not be asserted against the type of variant at issue. In Icescape, the Court of Appeal considered a letter written by the examining division during the prosecution, but found that the evidence it provided fell well below the threshold set by the Supreme Court in Actavis. The contents of the file did not unambiguously resolve the relevant point on the scope of protection conferred by claim 1 of the patent, and it would not be contrary to the public interest for the contents of the file to be ignored. In the Court’s view, the circumstances were a very good illustration of why it is generally so unprofitable to explore the prosecution history. In L’Oréal Société Anonyme & Anor v Rn Ventures Limited79 the defendant sought to rely on the prosecution history of the patent, where the patentee had limited claim 1 of its patents to the ‘tension/compression embodiment’ rather than the ‘shear’ embodiment, in order to support inventive step. However, Carr J did not consider either of the two circumstances in which the prosecution history may be used in claim construction contemplated in Actavis v Eli Lilly to apply in this case. This was because the points at issue were not truly unclear in the light of the specification and claims of the patent and nor did the file unambiguously resolve any issue. It was also not contrary to the public interest for the contents of the file to be ignored. In particular, L’Oréal was under no duty to correct any misunderstanding about the scope of the claims on the part of the examiner. The judge added that: ‘It should be emphasised that reference to the prosecution history is the exception, and not the rule … Parties should think carefully in future before incurring additional costs in arguing about the prosecution history.’ Despite this scepticism, the prosecution history was relied on in Akebia v Fibrogen,80 for the first time, where the facts fell into the public interest category. Here, the patentee had stated to the EPO during prosecution that they would not seek to assert their patent over prior art compounds, which they subsequently did assert it against in the Patents Court. The French approach regarding the role of the prosecution file in the assessment of the scope of protection has recently been confused by the Pemetrexed cases. Before the Pemetrexed decisions (see section VIII.) it was quite clear from case-law that the prosecution file was not decisive on its own but formed part of the general factual context by which scope and infringement were determined: i) In Sagem v Acome,81 the patentee had claimed before the EPO that its patent was limited to a cable without supporting structure (in order to overcome an Article 123(2) objection) and then, before French judges, he filed an infringement proceeding against cables with a supporting structure. The Court held that no infringement was characterised by taking notably into account the fact that ‘during the examination procedure before the EPO, [the patentee] has (…) clearly stated that the cable, subject of the invention, did not comprise any supporting structure’. ii) In Hewlett Packard v Agilent,82 the Paris Court of Appeal rejected the infringement claim by considering that a non-ambiguous claim with narrow scope cannot through interpretation

79 Patents

Court, L’Oréal Société Anonyme & Anor v Rn Ventures Limited [2018] EWHC 173 (Pat) (5 February 2018). Therapeutics Inc v Fibrogen, Inc [2020] EWHC 866 (Pat) (20 April 2020). 81 CA Paris, Sagem v Acome, 05/10728 (5 April 2006) 82 CA Paris, Hewlett Packard GmbH v Agilent Technologies Deutschland GmbH 08/00882 (27 January 2010). 80 Akebia

40 Scope of Protection of Patent Claims be given a general scope ‘especially when the patentee was forced, in order to distinguish himself from the prior art, to limit the scope of the claim in the course of the examination procedure’. iii) In Institut Pasteur v Siemens,83 the Court of First instance considered that it could ‘assess [the] scope [of the patent in suit] with regard to the amendments made in the context of the grant or opposition proceedings before the European Patent Office’ and therefore concluded to the absence of infringement on the DoE ground as the modifications made in examination proceeding to overcome a novelty objection and then in the opposition proceeding ‘must be taken into account unless the legal security of third parties is compromised’ and ‘have had the consequence of limiting the scope of the invention (…) in order to obtain the grant and the maintenance of the patent in question’. iv) In Nintendo v France Brevet,84 the Paris Court of First instance stated that ‘FRANCE BREVETS cannot maintain before the present court a position that is completely opposed to the one asserted before the EPO’. In this case a French national patent was in suit but arguments related to the EP patent (filed under the priority of the French patent-in-suit) were opposed to the claimant. v) In Bayer v Ceva,85 the Paris Court of First instance rejected a preliminary injunction claim by taking into account, among other elements, the parties’ observations before the Canadian and Indian Patent Offices. In contrast with the above case-law, in the Pemetrexed decision on the merits,86 the Paris Court of First instance made the very general statement that ‘since the patent is a title that is self-sufficient, the examination procedure before the office, which is a mere interpretation tool, is optional, has no effect on the scope of the patent and does not bind either the judge nor the patentee. The patentee’s behaviour, when acquiescing to the examiner’s request for amendment, cannot be interpreted as an admission binding on the court, and has no effect on the scope of the claim’. However, the Court also recalled that, in this case, the limitation was made following an observation by the EPO examiner under Article 123(2) EPC. Therefore, no definite conclusions can be drawn yet from this decision and it remains unclear whether the Court wanted to limit the impact of the file wrapper generally or whether it only made a difference between amendments made to overcome a patentability objection and those made to overcome a formal objection (such as an Article 123(2) objection). French case-law since the pemetrexed decision remains unclear: i) In Duplo v MGI,87 the Paris Court of First instance took into account: (i) in assessing the sufficiency of the description, the absence of any difficulty in this respect during the examination and opposition proceedings; and (ii) in assessing the inventive step, an examination procedure of a foreign patent application filed by the party who claimed for the revocation. ii) In Umicore v Nanomakers,88 the Court took into account the observations made by the patentee before the USPTO: ‘If they have no reason to be opposed to Umicore in the debate regarding the assessment of the scope of the EP patent EP 409, these observations confirm

83 TGI

Paris, Pasteur v Siemens, 08/08679 (28 May 2010). Paris, Nintendo v France Brevet, 14/05090 (26 May 2016). 85 TGI Paris, Bayer v Ceva, 19/56082 (11 September 2019). 86 TJ Paris, Eli Lilly v Fresenius, RG 17/10421 (11 September 2020). 87 TJ Paris 3.2, Duplo v MGI, 19/02734 (26 March 2021). 88 TJ Paris 3.2, Umicore v Nanomakers, 19/04143 (7 April 2021). 84 TGI

The Role of the Prosecution File 41 however, if it were necessary, that characteristic b) of claim 1 must be read as relating to a surface layer made up of SiOx to the exclusion of another component.’ iii) However, in Araxxe v Sigos,89 where a French patent was in suit, the Paris Court of Appeal decided not to take into account the examination procedure of the EP patent which was filed under priority of the French patent in suit, nor the opposition procedure of said EP patent (in contrast with the above Nintendo v France Brevet case. In this decision, the Court seems to follow the Pemetrexed decision by making the following general statement ‘the fact of amending claims in the context of the EP application procedure cannot be considered as an ‘acquiescence’ to the objections raised by the examiner or as an ‘admission’ of the invalidity of his title, but rather as a defence of the invention by the applicant. Finally, the principle of estoppel, opposed by Sigos because of the positions of Araxxe before the EPO in the context of the examination of its EP patent application, is inoperative in the present legal debate regarding the infringement of the French patent’. In the absence of clear case-law yet, it is necessary to wait for further decisions to clarify what role French judges are ready to give to the prosecution file in their assessment of the patent scope and infringement. In Germany, it is not generally permitted to use the prosecution file as a means to construe the scope of protection of claims. However, while refusing to make a definitive statement in this regard, the Federal Court of Justice90 has opened up the possibility that variants that were initially disclosed but later on excluded from the claim and the specification during prosecution, in order to distinguish the claimed invention from the prior art, might be disclaimed. Otherwise, that is, if the variants that were initially disclosed were later excluded due to formal requirements (such as inadmissible extension) the scope of protection is not limited to the disclosed variant. In Sweden, by contrast, documents from the prosecution file can be used to interpret unclear patent claims and statements made in the description as long as it leads to a narrowing scope of protection.91 In the Netherlands, similarly, the Supreme Court has held that the patentee can only rely on the prosecution file if the claims are unclear. However, an alleged infringer is not so limited if they wish to rely on the prosecution file in order to argue that the patentee is estopped from asserting infringement by the doctrine of equivalents (for example, because the patentee limited the claims during prosecution or interpreted the claims in a limiting manner to secure the patent).92 In fact, an alleged infringer can even rely on the prosecution file of a different patent of the same patent family.93 In Switzerland, like Germany, the prosecution file is not considered relevant for the interpretation of patent claims; amendments and waivers made during prosecution can only be relied upon if they are referred to in the claims or the description. Claiming infringement with regard to an embodiment that had been waived during prosecution does not automatically constitute a venire contra factum proprium either, at least not if the waiver was declared in order to avoid an unallowable amendment.94

89 CA Paris, Araxxe v Sigos, 19/06212 (28 April 2021). 90 BGH, Pemetrexed X ZR 29/15 GRUR 2016 921 (14 June 2016). 91 Supreme Court, NJA 2002, 660 (Eli Lilly v Ratiopharm) and Patent and Market Court of Appeal, Suomalaiset RahaAutomaatit Payazzo Finland Oy AB v Easypark AB, case no PMT 744-16 (17 November 2016). 92 Confirmed in Hoge Raad, Resolution v AstraZeneca NJB 2018/1195 (8 June 2018) para 3.4.3. 93 Rechtbank Den Haag, Quantum v DMS C/09/526366 / KG ZA 17-154 (13 June 2017) para 4.3.3. 94 Federal Supreme Court, BGE 143 III 666 Pemetrexed (20 October 2017) para 4.5.

42 Scope of Protection of Patent Claims

VI. Particular Terms and Forms of Claim A. Words of Approximation and Degree Claims using words of degree, without expressly defined dimensions, will tend to be treated by the English courts as meaning what a person skilled in the relevant art would regard them to mean when compared to the average or similar art.95 For example, in Abbott Laboratories v Evysio96 the court accepted that the patentee intended the words ‘substantially flat’ to draw a distinction between the terms ‘curved’, ‘arcuate’, ‘rounded’, ‘square’ and ‘flat’ in referring to the various elements of the stent at issue.97 However, it is submitted that, in keeping with the Protocol on Article 69, the courts can be expected to reject any interpretation that is so vague that it creates uncertainty for third parties, but without depriving the patentee of the full protection to which he is entitled. See, for example, the words ‘close’ and ‘minimum’.98 Conversely, the court may interpret an absolute term as permitting some practical measure of degree,99 or ‘a word with absolute overtones can be made to bear relative ones’.100 As with words of degree, and in keeping with general principles, the evidence of the skilled person’s understanding of approximate terms, with the benefit of the patent specification and common general knowledge, is paramount in the English courts. In Generics UK Ltd v Yeda,101 the parties were agreed that the skilled team would understand the patentee to be using the term ‘approximately 6:2:5:1’ to allow for variations in amino acid analysis and variability in copolymer-1 synthesis. The court added that the only other evidence which was material to the question of what the skilled person would have understood that term to mean was that given by Dr Coles and Professor Kent, namely that the skilled person would be concerned that variations might affect the known efficacy and safety of co-polymer-1. Accordingly the question to be asked on infringement was whether the percentage difference from 6:2:5:1 expressed as a molar fraction in any given sample is within the variability which can arise from amino acid analysis and copolymer-1 synthesis. The skilled person would not consider a difference which exceeded such variability as being within the scope of the claim.

The degree of approximation is seemingly therefore linked to the technical tolerances of the methods used. The EPO takes a similar approach to terms of the kind ‘approximately’ or ‘substantially’. When using terms such as ‘about’ when applied to a particular value or range, if error margins are provided in the specification, they must be substituted for the word ‘about’, or similar term. If no error margins are specified in the application, an expression such as, for example, ‘about 200°C’ is interpreted as having the same round-off as ‘200°C’.102

95 For old cases concerning the words ‘large’ and ‘thin’ see, respectively, British Thomson-Houston v Corona Lamp Works (1922) 39 RPC 49 and Cleveland Graphite v Glacier Metal [1950] 67 RPC 149. 96 [2008] RPC 23 (21 April 2008). 97 Inhale Therapeutic Systems v Quadrant Healthcare [2002] RPC 21 (20 June 2001). 98 See Poseidon v Cerosa [1982] FSR 209 (10 December 1975) in which similar principles are adopted under the Patents Act 1949. 99 See, eg, Milliken Denmark A/S v Walk Off Mats Ltd [1999] RPC 47 (1 December 1995), SEB v Societé De’longhi [2003] EWCA (Civ) 952 (4 July 2003). 100 Nikken Kosakusho Works v Pioneer Trading Co [2005] FSR 15 (8 October 2004). 101 [2013] EWCA Civ 925 (29 July 2013). 102 See Guidelines for Examination, 4.7.1., March 2021 edition. And see, T 175/97 Elektrolytkondensator/SIEMENS (14 March 2000).

Particular Terms and Forms of Claim 43

B. ‘For’, ‘Suitable for’ and Purpose Limited Claims The word ‘for’ as an indicator of intention for a particular disease to be treated in Swiss form second medical use claims has been discussed extensively in the UK and elsewhere. However, in the UK, at least, that discussion has not begun to addressed EPC 2000 form claims, which are regarded as product rather than process claims, much less other purpose limited claims such as those of the sub-population type. In Germany, meanwhile the same distinction is not made between Swiss form and EPC 2000 claims (see chapters three and ten). Where the word ‘for’ serves its other function in the Swiss-form wording ‘[drug] for the preparation of a medicament’ it has been construed to mean that the medicament is the named drug, and not a derivative of it103 (reference should also be made to chapter three concerning products derived from a process). Outside the particular context of second medical use claims, a claim specifying that an article is ‘suitable for’ a particular purpose is a claim to the article per se whatever might be the purpose for which it was used.104 And a product claim, in the form ‘a device for operating …’ cannot be construed as a process claim, for which infringement requires use of the device for the specified operation.105 It means merely ‘a device suitable for operating …’. To infringe, however, the device must be suitable for the purpose or operation specified, without physical modification.106 Similarly, second medical use claims, which claim the use of a composition ‘for the treatment of ’ must be suitable for treating that illness, in other words the treatment must work in at least some individuals,107 and per Kitchin LJ in Regeneron Pharmaceuticals v Genentech Inc:108 … the medicament must treat the disease. That is not to say that the medicament must cure the disease; plainly many diseases characterised by angiogenesis cannot be cured. But it must improve the patient’s condition, and it must do so by treating the angiogenic component of the disease from which the patient is suffering … the medicament does not have to treat all, or indeed any other, aspects of the disease …

According to the Swedish Patent and Market Court of Appeal, the case law regarding the novelty assessment of product claims intended for a particular use, which as with many countries corresponds closely to the case law of the Boards of Appeal,109 also has implications for the assessment of infringement of such claims.110 The Court stated that when assessing novelty of a patent application, it may occur that prior art is invoked that concerns a device which solution corresponds to the solution according to the patent application, but which has not been used for the purpose stated in the patent application. With reference to the decisions from the Board of Appeals in T 15/91111 and T 1798/08,112 the Patent and Market Court of Appeal stated that if it is required

103 American Home Products v Novartis [2000] RPC 547 (6 December 1999) and [2000] EWCA Civ 231. See, however, the discussion in Ranbaxy UK v AstraZeneca [2011] EWHC 1831 (15 July 2011). 104 Furr v Truline (C.D.) (Building Products) [1985] FSR 553 (18 January 1985). 105 Coflexip v Stolt [2001] IP & T 1332. 106 Qualcomm Inc v Nokia Corp [2008] EWHC 329 (Pat). See also Rovi Solutions Corp v United Video Properties Inc [2014] EWHC 1559 (15 May 2014). 107 See Pfizer Ltd’s Patent [2001] FSR 16. 108 [2013] EWCA Civ 93. 109 Svea Court of Appeal, Crane AB v Arjowiggins Security SAS, case no T 11942-13 (13 March 2015) and Patent and Market Court of Appeal, Per Aarsleff A/S v Pentalnventions AB, case no PMT 585-19 (5 March 2020), with references to the Court of Patent Appeals, case no 11-164 (Modul-System HH AB) and case no 12-082 (Envac AB v DISAB Vacuum Technology AB). 110 Patent and Market Court of Appeals, Per Aarsleff A/S v Pentalnventions AB, case no PMT 585-19 (5 March 2020). 111 Citation not available. 112 Johns Hopkins University (unpublished) (21 August 2012).

44 Scope of Protection of Patent Claims that the technical design of the device in the relevant prior art is changed in any respect in order for the device to be used as described in the patent claim, the prior art lacks suitability. The Patent and Market Court of Appeal states that this entails that in infringement proceedings regarding a product intended for a particular use, the alleged infringing object is not suitable for the use in question if the alleged infringing object’s technical design must be modified in order for it to be used in the manner specified in the patent claim.

C. ‘Obtainable by’ and Product by Process Claims The EPO will not permit overt product by process language in the form ‘Product X obtained by process Y’ unless there is no other alternative available, because there is no other way of defining a particular characteristic of the product in question.113 The EPO prefers the claim to be structured as ‘Product X obtainable by process Y’, or equivalent.’ The latter is a product claim. As the EPO Guidelines state:114 Claims for products defined in terms of a process of manufacture are allowable only if the products as such fulfil the requirements for patentability, i.e. inter alia that they are new and inventive, and it is impossible to define the claimed product other than in terms of a process of manufacture. A product is not rendered novel merely by the fact that it is produced by means of a new process. The claim may for instance take the form ‘Product X obtainable by process Y’. Irrespective of whether the term ‘obtainable’, ‘obtained’, ‘directly obtained’ or an equivalent wording is used in the product-by-process claim, it is still directed to the product per se and confers absolute protection upon the product.

A new process which produces a product identical to an old product cannot confer novelty on that product. Instead, to be novel a product obtained or obtainable by a process has to have some novel attribute conferred on it by the process as compared to the known product. This was the conclusion of Birss J in Hospira UK Ltd v Genentech Inc,115 in which the claim in question was to a lyophilised formulation of trastuzumab, ‘obtainable by’ lyophilising the solution described in Table 5 of the patent specification. However, the judge states that this is a rule of the law of novelty, it is not a principle of claim construction. Although in effect the rule treats ‘obtained by’ language as ‘obtainable by’ language, nevertheless as a matter of claim construction a claim to a product ‘obtained by’ a process means what it says. That will be the relevant scope of the claim as far as infringement (and sufficiency) are concerned. Thus, there is a paradox, as was noted in Kirin Amgen,116 that ‘applying the process feature as a relevant limitation which was not satisfied for the purposes of (non-infringement) but ignoring it for the purposes of novelty’. In other words, the rule construes the words ‘obtained by’ differently depending on whether the context is validity or infringement. Birss J explains this as follows: It is not obvious that an inventor who drafted his or her claim in the form of a product ‘obtained by’ a process ever intended to cover other things or would be understood to be using language to mean that. The test for novelty is one thing but to ignore the clear words of the claim may result in it covering things which owe nothing to the inventor’s technical contribution and risk insufficiency. It is hard to see how one can apply one of the key principles of construction emphasised by Kirin-Amgen itself, that the reader considers what the draftsman was using language to mean, in any other way.

113 International

Flavors & Fragrances [1984] OJ EPO 309. F-IV, 4.12, March 2021. 115 [2014] EWHC 3857 (Pat). 116 [2002] EWCA Civ 1096. 114 Guidelines

Particular Terms and Forms of Claim 45 Product by process claims are therefore an exception in the UK to the rule in Merrell Dow that claims are to be construed the same for infringement as they are for novelty.

D. ‘Preferably’, ‘Preset’ and ‘Predetermined’ In the English case Folding Attic Stairs,117 Peter Prescott QC (sitting as a Deputy Judge) had to determine the meaning of ‘a preset distance’ and ‘a predetermined size’: With regard to Nikken,118 from a reading of the patent in that case as a whole it was hard, nay impossible, to work out what was the purpose of having a groove that was of predetermined depth, and according to what criterion the depth was to be predetermined. It was in that context, I think, that Jacob LJ wrote that it cried out for the questions, predetermined by whom, and what did it mean. … I am unable to accept a contention that, in the context of this patent, ‘predetermined’ or ‘preset’ is meaningless and of no effect. A reader skilled in the art would think the patentee was using it in order to try to tell him something; and he would work out the purpose by reading the patent as a whole.

The judge goes on to say that this means interpreting the language of the claim using the usual principles of construction in the English court (which would now include the Actavis Questions (see section III. above). In this case, the outer frame of the folding stairs at issue was for complementary engagement and mounting within an associated rectangular ceiling ope ‘of a predetermined size’. This could only mean that, in the manufacturing process, the size of the outer frame was made to correspond to that of the ceiling ope of the house in which the stairs were to be fitted. Furthermore, the words ‘such that each side beam is spaced a preset distance inwardly of the side members of the outer frame when the inner frame is mounted within the outer frame in the nesting position’ must mean that the separation between the respective side beams is chosen by the manufacturer (or one to whom he leaves the decision) with the aim of coping with a variety of ope widths while avoiding excessive bending or cranking of the metal arms of the stairs. The term ‘predetermined’ is accepted by the EPO. For example, in T 1321/04119 a ‘measured’ nitrogen oxide concentration is contrasted with a ‘predetermined value’ of nitrogen oxide concentration, indicating that the ‘predetermined value’ is not a value based on current measurements of the nitrogen oxide concentration. The board concludes that the person skilled in the art understands the wording ‘predetermined value of nitrogen oxide concentration’ as a constant value which is independent of the instantaneous condition of the exhaust gas and which is selected as a value to which it is sought to set the nitrogen oxide. Furthermore, the Guidelines for Examination120 state that optional features, that is features preceded by expressions such as ‘preferably’, ‘for example’, ‘such as’ or ‘more particularly’ are allowed if they do not introduce ambiguity. In which case, they are to be regarded as entirely optional. They will be regarded as introducing ambiguity and render the scope of the claim unclear, contrary to Article 84 EPC, if they do not lead to a restriction of the subject-matter of the claim. As examples of wording that is ambiguous, the Guidelines give: i)

‘a method to manufacture an artificial stone, such as a clay brick’. This is because a clay brick will never be an artificial stone.

117 Folding Attic Stairs Limited v The Loft Stairs Company Limited, Michael Heraghty [2009] EWHC 1221 (Pat) 9 June 2009. 118 Nikken Kaosakusho Works v Pioneer Trading Company [2005] EWCA Civ 906 (29 June 2005). 119 T 1321/04 (Meaning of terms used in patent documents) (unpublished) 28 February 2005. 120 Guidelines Part F IV 4.9, March 2021.

46 Scope of Protection of Patent Claims ii)

‘the solution is heated up to between 65 and 85°C, particularly to 90°C’. This is because the temperature after the term ‘particularly’ contradicts the range before it.

In Corevalve Inc v Edwards Lifesciences AG121 the words of Claim 1 of the patent were ‘A valve prosthesis, preferably a cardiac valve prosthesis, for implantation in the body.’ It was held that the word ‘preferably’ imposed no limitation. It did indicate, however, that whatever other type of valve prosthesis was covered by this claim, it must at least cover a cardiac valve prosthesis.

E. ‘Consisting of ’ and ‘Comprising of ’ The Guidelines for Examination of the EPO state that:122 A claim directed to an apparatus/method/product ‘comprising’ certain features is interpreted as meaning that it includes those features, but that it does not exclude the presence of other features, as long as they do not render the claim unworkable. On the other hand, if the wording ‘consist of ’ is used, then no further features are present in the apparatus/method/product apart from the ones following said wording.

The Guidelines provide the example of a claim for a chemical compound that refers to it as ‘consisting of components A, B and C’ by their proportions expressed in percentages. In this example, the presence of any additional component is excluded and therefore the percentages must add up to 100 per cent.123 The words ‘consisting of ’ may be tempered, however, by words of degree. The Guidelines for Examination draw a distinction between: cases of chemical compounds or compositions, where the use of ‘consisting essentially of ’ or ‘comprising substantially’ means that specific further components not materially affecting the essential characteristics of the compound or composition may be present; and any other apparatus/method/product, where these terms have the same meaning as ‘comprising’.124

F. ‘Characterised by’ Rule 43 (1)(b) EPC requires: (1) The claims shall define the matter for which protection is sought in terms of the technical features of the invention. Wherever appropriate, claims shall contain: (a) a statement indicating the designation of the subject-matter of the invention and those technical features which are necessary for the definition of the claimed subject-matter but which, in combination, form part of the prior art; (b) a characterising portion, beginning with the expression ‘characterised in that’ or ‘characterised by’ and specifying the technical features for which, in combination with the features stated under sub-paragraph (a), protection is sought.

121 [2009] EWHC 6 (Pat) (9 January 2009). 122 Guidelines Part F IV 4.20, March 2021. For English authority see Napp Pharmaceutical Holdings Ltd v Sandoz Ltd [2009] EWCA Civ 252 (1 April 2009). 123 T 0711/90 (unpublished) (15 September 1993). 124 Guidelines Part F IV, 4.20, March 2021.

Particular Terms and Forms of Claim 47 Laddie J paraphrases this two part claim structure in Merck & Co Inc v Generics (UK) Ltd,125 in which he says: Furthermore, the patentee may choose a form of language which emphasises which features of an invention are important and which are not. For example it is common to find claims which start with general description followed by ‘characterised in’ followed by a list of features. The addressee would appreciate that the latter features are particularly important but the features before the words ‘characterised in’ are less so. If there is a variant to the latter which obviously does not affect the way in which the invention works, the notional reader may be reasonably confident that the inventor wanted to cover this variant as well. In these types of cases, the monopoly is likely to extend to the new variant.

In other words, as Lewison J puts it:126 ‘I take from this that it is more likely that the patent requires strict adherence to the integers that follow the word “wherein”, than to the integers that precede it.’

G. Words Denoting Consequence The English Court of Appeal case ICI Plc v Montedison127 demonstrates the difficulty that can be encountered when interpreting claims using consequential language. In this case the claim was concerned with the production of a composition comprising a polymerisable organic liquid A, finely divided inorganic filler particles B and a polymeric dispersant C ‘whereby the filler particles are maintained in a state of stably deflocculated dispersion in the polymerisable liquid’. The three Lords Justice of Appeal came to three different conclusions: i)

Stuart-Smith LJ: ‘whereby’ in this context meant that the lowest the causal threshold should be put was that without the polymeric dispersant, C, the effect would not be achieved, it must be a causa sine qua non. ii) Morritt LJ: the specific result must be achieved from the combination of the three ingredients A, B and C rather than by C alone and must be achieved by the combined effect of the three constituents to the exclusion of any other dispersant in the sense that the invention will not work without them. iii) Sir John May: ‘whereby’ required one to construe it as requiring C to be the causa sine qua non of, or the dominant mechanism giving rise to, the ultimate result. In Thorn v Siemens128 the claim was to a printed circuit board with a protective coating consisting of a plastic film made from an electrically insulating, thermoplastic material to which wax is added to improve its flow properties, ‘said wax at the same time facilitating through-plating and soldering operations through the protective coating …’. The Court of Appeal held that the word ‘facilitated’ operated as a performance requirement of the claim, which required practical benefits. The patentee was entitled to rely on any means by which the wax in the defendant’s product made through-plating and soldering through the coating easier in a practical sense.129

125 [2003] EWHC 2842 (Pat) (27 November 2003). 126 Ultraframe (UK) Ltd v Eurocell Building Plastics Limited, Eurocell Profiles Limited [2004] 1785 EWHC (Ch) (22 July 2004). 127 [1995] RPC 449 (7 March 1995). 128 Siemens Schweiz AG v Thorn Security Ltd [2008] EWCA Civ 1161 (22 October 2008). 129 Contrast this with ‘in order to …’ as mere ‘surplusage’ in PCME Ltd v Goyen Controls Co UK Ltd [1999] FSR 801 (22 January 1999).

48 Scope of Protection of Patent Claims

VII. Numerical Ranges A. Denmark Numbers and numerical ranges in patent claims define the scope of protection and as such they are subject to claim construction like any other feature of a patent claim. Each feature must be read and interpreted by the skilled person in light of the patent specification and figures. Generally, numbers outside a numerical range are usually excluded from the subject matter of the patent claim, especially if the skilled person considers that it is a ‘critical value’ essential for carrying out the invention. If an embodiment does not comply with such a value, there is unlikely to be literal or equivalent infringement. On the other hand, minor tolerances – especially if the number is not deemed critical for the invention – may be consistent with the technical meaning of a given number or range in a patent claim and thus fall within the scope of the claim. In Denmark, there is almost no case law dealing with the interpretation of specific numbers or numerical ranges but it is generally assumed – always subject to the technical teaching of the patent – that a given number (eg a concentration) must be understood to convey the range of permissible concentrations and the accuracy with which those concentrations need to be determined. Thus, the precision with which the number is written is relevant. In AstraZeneca v Krka,130 the High Court held that a claim in relation to esomeprazole of an enantiomeric purity equal to or in excess of 99.8 per cent was not infringed by a product having an enantiomeric purity of up to 99.6 per cent. The Court noted that the enantiomeric purity of ≥99.8 per cent was an essential element of the invention. If a claim identifies a concentration of 10 per cent it would likely be understood to be expressed in terms of whole numbers, and applying conventional rounding extends to ≥9.5 to