To celebrate the 10-year anniversary of the UK Supreme Court, Managing IP summarised some of the decisions of the court and pending cases featuring firms such as Allen & Overy, Bristows, EIP Legal, Herbert Smith Freehills, Osborne Clarke and Powell Gilbert
Managing IP’s article featured six key decisions, ranging from patent to design, starting with Lucasfilm v Ainsworth (2011). Harbottle & Lewis acted for the appellant Lucasfilm (one of the lead barristers for the appellant was Jonathan Sumption QC, who later became a Supreme Court justice) while S C Andrew (now defunct) acted for the respondent Ainsworth.
Virgin Atlantic Airways v Zodiac Seats (2013): Wragge & Co (now Gowling WLG) acted for the appellant Zodiac Seats UK while DLA Piper acted for the respondent Virgin Atlantic Airways. One of the lead barristers for the appellant was Henry Carr QC, who later became a Patents Court judge but sadly died this year (read his exclusive interview this year with Managing IP here).
PMS International Group v Magmatic (2016): Briffa acted for the appellant Magmatic Limited while Gordons Partnership acted for the respondent PMS International Group.
Actavis v Eli Lilly (2017): Bird & Bird acted for Actavis while Hogan Lovells represented Eli Lilly.
Cartier International v BT (2018): Reed Smith acted for the appellant BT while Wiggin acted for the respondent Cartier International.
Warner-Lambert v Generics (2018): Allen & Overy represented the appellant Warner-Lambert Company (Pfizer) while Taylor Wessing and Powell Gilbert acted for the respondents.
You can read Managing IP's summary here.
A court with IP specialists
One of the recent developments in the court that was widely welcomed by the UK IP community was the elevation of Lord Kitchin, giving the apex court an out-and-out specialist IP judge. With Lord Hodge, who was formerly a Scottish IP judge, the court now has two justices with experience in IP. Prior to Kitchin’s appointment, Lord Neuberger, a former justice, was seen as the prominent judge for IP disputes.
The IP community will now see Kitchin as the lead justice for IP matters, but in his exclusive interview with Managing IP he warned that being the specialist IP practitioner “doesn’t mean that [his] view will carry the day”, adding: “I certainly hope that I will be invited to participate in the IP appeals.”
Upcoming cases and Lord Kitchin
Below we pick out the upcoming cases before the court and highlight whether or not, in the interests of justice, Kitchin will be involved.
- Regeneron Pharmaceuticals Inc v Kymab Ltd [2018] EWCA Civ 671 (a patent dispute on insufficiency).
If this case goes ahead, it is unlikely that Kitchin will be involved because he was the lead judge in this case in the Court of Appeal. Lady Arden won’t be either because she was on the panel for the case.
Law firm representatives in the Court of Appeal: Regeneron Pharmaceuticals was represented by Allen & Overy while Kymab was represented by Powell Gilbert.
- Unwired Planet International Ltd and another v Huawei Technologies (UK) Co Ltd [2018] EWCA Civ 2344 (an SEP dispute over FRAND licence and English court’s jurisdiction to determine it). The hearing for this case starts on October 21 2019.
Kitchin also led on this eagerly anticipated judgment, which was published after his elevation to the Supreme Court, so also unlikely to be involved in this one. The other Court of Appeal judges were Lord Justices Asplin and Floyd.
Law firm representatives in the Court of Appeal: EIP Legal and Osborne Clarke represented Unwired Planet while Huawei was represented by Powell Gilbert.
- Huawei Technologies Co Ltd and ZTE Corporation v Conversant Wireless Licensing SARL [2019] EWCA Civ 38 (a dispute on the English court’s jurisdiction to decide on foreign patents). The hearing for this case starts on October 21 2019.
Kitchin wasn’t involved in this judgment, which was spearheaded by Floyd LJ, but the Court of Appeal made several references to/relied on the Unwired Planet v Huawei judgment. The Supreme Court treated both cases as one in its permission to appeal decision so Kitchin will also be excluded from this case.
Law firm representatives in the Court of Appeal: EIP Legal represented Conversant Wireless Licensing; Allen & Overy represented Huawei while Bristows acted for ZTE.
- Shanks v Unilever Plc & Ors [2017] EWCA Civ 2 (a dispute concerning employee inventor compensation). This appeal was heard in February and judgment will be handed down on October 23 2019.
Kitchin is on the bench for this one because he wasn’t involved in the Court of Appeal. On the other hand, Lord Briggs and Lord Sales won’t be involved because they dealt with it in the Court of Appeal.
Law firm representatives in the Court of Appeal: Beresford & Co (now defunct) acted for Ian Alexander Shanks (Chris Ryan was the solicitor on record when the appeal reached the Supreme Court) while Herbert Smith Freehills acted for Unilever.
