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Reform of UK Provisions on Groundless Threats of Patent Infringement

In August 2013, I produced a short commentary for the Kluwer Patent Blog regarding the decision of Mr Recorder Meade QC in SDL Hair Ltd v Next Row Ltd & Ors [2013] EWPCC 31, where Mr Meade was faced with the question of whether two letters and one email constituted groundless threats of patent infringement under s.70 of the UK’s 1977 Patents Act (“the Act”).  (

In that post, as well as summarising the decision on that issue, I also provided a very short background to the cause of action created by s.70 whereby a person (whether or not the proprietor o [...]

Abuse of Process – Patentee does not have to assert all known means of infringement

A decision from Mr Justice Birss in Adaptive Spectrum And Signal Alignment Inc v British Telecommunications Plc [2014] EWHC 4194 has introduced additional complications for parties found to infringe a patent who then seek to work around the same. In essence that party cannot simply sit back and assume that the only feature to address is that which was successfully attacked by the patentee.  Instead that party must now consider whether their product or system might infringe in other ways (and work around the same as well).

The judgment stems from an infringement action brought by Adaptive Spectrum And Signal Alignment Inc. (ASSIA) against BT for infringement of two of its patents.  BT’s [...]

Moving the SPC Goal Posts or a Necessary Amendment?

It is hard to think of a recent SPC case before the UK courts where the judge has not had to refer questions to the CJEU in order to either clarify the terms of the SPC Regulation or the CJEU’s earlier interpretations.  This necessity has arisen at an early stage in an action between Actavis and Boehringer Ingelheim before the High Court of England & Wales ([2013] EWHC 2927 (Pat)) concerning the validity of an SPC for a combination product.

Boehringer Ingelheim were the proprietors of EP (UK) 0,502,314 which expired on 30 January 2012. Claim 5 of this patent was said to protect the active ingredient Telmisartan (used for the treatment of hypertension). This is the active ingredient in Bo [...]

Smart Card Patents that were not so Smart

and Carissa Kendall-Palmer

In HTC Corporation v Gemalto SA and HTC Corporation v Gemalto NV [2013] EWHC 1876 (Pat), Mr Justice Birss ruled upon the validity and infringement of two telecommunications patents concerning smart/chip card technology. The Claimant came to the High Court of England and Wales seeking revocation of the patents; the Defendant counterclaimed for infringement.

The 865 patent

The 865 patent, entitled ‘Using a High Level Programming Language with a Microcontroller’, was said to relate to using a high level programming language with a smart card or microcontroller. Gemalto contended that claims 1, 3, 8, 9, 15 and 18 were independently valid, and save for claim 9, they [...]

Drawing the line between a threat of infringement proceedings and providing factual information

Section 70 of the UK’s 1977 Patents Act “the Act” (as shown below) creates a cause of action against a party that issues groundless threats of patent infringement:

(1) Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens another person with proceedings for any infringement of a patent, a person aggrieved by the threats (whether or not he is the person to whom the threats are made) may, subject to subsection (4) below, bring proceedings in the court against the person making the threats, claiming any relief mentioned in subsection (3) below.

(4) Proceedings may not be brought under this section f [...]


And Carissa Kendall-Palmer

This piece follows from two previous postings to this blog by Robert Lundie Smith on the Nokia/HTC/IPCom FRAND litigation before the High Court of England and Wales (here and here). This latest update, for which Robert is joined by colleague Carissa Kendall-Palmer, explains how the joint trial of FRAND issues in the aforementioned actions has been kicked into the long grass, potentially never to be found again; and how a further opportunity for the High Court to consider such issues, in an action between Vringo Infrastructure Inc. (“Vringo”) and ZTE (UK) Limited & ZTE Corporation (together “ZTE”), has also been delayed until after the court has had the opp [...]

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