Patent injunctions: general or specific orders? - PowerPoint Presentation

Patent injunctions: general or specific orders? Dr Jaani Riordan Barrister, 8 New Square LMU International Conference, Munich, 5 April 2019

Overview Statutory framework The ‘conventional general form’ Specific orders Underlying policy Special cases Comparative discussion

(1) Statutory framework

“ The High Court may by order (whether interlocutory or final) grant an injunction … in all cases in which it appears to the court to be just and convenient to do so . ” Senior Courts Act 1981 (UK) s 37(1)

“ … civil proceedings may be brought in the court by the proprietor of a patent in respect of any act alleged to infringe the patent and … in those proceedings a claim may be made— (a) for an injunction … restraining the defendant … from any apprehended act of infringement; …” Patents Act 1977 (UK) s 61(1)

Harmonisation of injunctions TRIPS Agreement art 41(1), 41(2), 44(1), 44(2) Directive 2004/28/EC Recital (17), (24) Art 3(1), 3(2) EPC art 64(3) (any infringement of a European patent shall be dealt with by national law) UPC Rules of Procedure (18 th draft) rr 211(1)(a), UPC Agreement art 62(1), 63(1)

“ Depending on the particular case, and if justified by the circumstances, the … remedies to be provided for should include prohibitory measures aimed at preventing further infringements of intellectual property rights . ” Directive 2004/48/EC recital (24)

Article 63 Permanent injunctions “1. Where a decision is taken finding an infringement of a patent, the Court may grant an injunction against the infringer aimed at prohibiting the continuation of the infringement. The Court may also grant such injunction against an intermediary whose services are being used by a third party to infringe a patent. 2. Where appropriate, non-compliance with the injunction … shall be subject to a recurring penalty payment payable to the Court. ” UPC Agreement (2013/C 175/01) art 63(1)

(2) ‘Conventional’ general orders

The ‘general’ form ‘The Defendant shall not infringe [the Patent].’ ‘The Defendant must not infringe [the Patent] whether by doing the following acts or otherwise howsoever , that is to say by: …’ ‘that the defendants, by themselves, their servants or agents be restrained from infringing Patent No [ ].”

“ It is important that … an injunction, is drafted so as to set out, with such clarity as the context admits, what may not be done. It is for that reason that the standard form of injunction is in the terms restraining the defendant from infringing the patent . Such an injunction is limited in term and confined to the right given by section 60(1) and (2) of the Patents Act. … Such an injunction is confined to the monopoly as claimed . ” Coflexip SA v Stolt Comex Seaway MS Ltd [2001] RPC 9 (CA) , [14] (Aldous LJ)

“ Normally, having found infringement of a valid patent, the English court grants an injunction in general terms; it simply restrains the defendant ‘from infringing patent No ….’. It might be suggested … that this practice should be different in the case of contributory infringement where what is sold … does not itself infringe and has a non-infringing use. The suggestion might be that the court should modify the injunction so as to try to spell out what it is that the defendant can do. We would not have thought that normally appropriate: it will be up to the defendant to work out how to ensure that there is no ultimate infringement. ” Grimme Landmaschinenfabrik GmbH & Co KG v Scott [2010] EWCA Civ 1110 , [134] (Jacob and Etherton LJJ)

“Undoubtedly wherever a person has done a wrongful act in infringing a patent prima facie that is ground for granting an injunction, because when a man has done a wrongful act the probability (unless there is anything which prevents that probability from arising) is that he will continue it, and the Patentee who is injured by that act is entitled, in a Court of Equity, to prevent a repetition of that wrongful act.” Proctor v Bayley & Son (1889) 6 RPC 538 , 541 (Cotton LJ)

Examples

‘Injunctions in broad general terms have been granted by judges of the greatest eminence over the years. It clearly would be wrong to change a settled practice on a whim. In the area of equitable relief, as in all others, judges are meant to apply uniform standards and uniform principles . It would be unacceptable if it became impossible for parties to make a reasonably accurate prediction as to the form [of] relief … But although injunctions have been granted in wide terms in patent actions in the past it appears that their terms have seldom if ever been the subject of detailed consideration . ” Coflexip SA v Stolt Comex Seaway MS Ltd [1999] FSR 473 , [25] (Laddie J)

(3) ‘Specific’ orders

The ‘specific’ form The injunction is ‘tailored’ to cover only the specific infringements found by the court Other products and processes which might fall within the patent claims are not enjoined The parties have liberty to apply (eg for the patentee to allege a new form of infringement) Proposed by Laddie J In Coxflexip and overruled by the Court of Appeal

“In a patent action [the patentee] normally alleges that [D] has committed one or two specific types of infringement. … In virtually all cases, the infringement will occupy just a small part of the monopoly secured by the patent and its claims. Further, in almost all cases, it is only the activities identified [in the patentee’s pleading] which the defendant threatens to continue. He has not threatened to commit any other acts. The effect of a broad injunction would be to restrain the defendant from doing things he has not threatened to do, may never have thought of doing and may be incapable of doing . ” Coflexip SA v Stolt Comex Seaway MS Ltd [1999] FSR 473 , [11] (Laddie J)

“… in any infringement action the court is not embarking on a consideration of all possible products and processes which might fall within the patent monopoly , but only those which have been identified in the pleadings. An injunction in general terms restraining the defendant from infringing the patent therefore covers more than … the court has considered. … This is not a merely theoretical objection. The scope of protection can be one of the most difficult issues in patent litigation. … The result is that, particularly at the edges of a patent claim, the question of infringement can raise fine points . ” Coflexip SA v Stolt Comex Seaway MS Ltd [1999] FSR 473 , [14]–[15] (Laddie J)

The order of Laddie J in Coflexip “The Defendants and each of them be restrained ... from using or offering for use in the [UK] a process for laying flexible conduit employing a Flexible Lay System of the design installed in the Seaway Falcon and described in the Defendant’s Product and Process Description dated March 27, 1997 which process includes at least one occasion on which the flexible conduit being laid incorporates a rigid accessory … within its length. … Liberty to apply.”

Orders in ‘specific’ form Laddie J’s approached was quickly followed in a number of cases (almost all of them before the decision of the Court of Appeal in Coflexip ) See Microsoft Corp v Plato [1999] IP&T 1 (Court of Appeal) See Beautimatic v Mitchell Pharmaceuticals [2000] FSR 267 (Neuberger J) See Nutrinova Nutrition Specialties & Food Ingredients GmbH v Scanchem UK Ltd [2001] FSR 43 ( Pumfrey J) Today the practice is the exception rather than the norm

“in the absence of good reason to the contrary in a particular case, a narrow injunction of the sort indicated by Laddie J should be granted once infringement of an intellectual property right is established. So far as the normal case is concerned, it seems to me that the approach of Laddie J is to be adopted for two reasons: first, I consider that his reasoning and conclusion are correct; secondly, it would not … be desirable to have different judges at first instance adopting different approaches on this issue. Having said that, the nature of the injunctive relief granted in each case must inevitably turn on its own particular facts… [T]he present case [does not justify] a departure from what I now regard as the normal approach . ” Beautimatic International Ltd v Mitchell International Pharmaceuticals Ltd [2000] FSR 267, 284 (Neuberger J)

“[the trial judge] expressed the view, in my opinion correctly, that the general principles set out by Laddie J for the grant of injunctive relief cannot sensibly be regarded as restricted to cases of patent infringement , but must be equally applicable to [infringements of other IP rights], although the particular manner of applying them was likely to differ in the different cases. But what it demonstrates … is that there can be no invariable rule as to the relief to be granted in intellectual property cases. In each case the judge has a discretion, as Laddie J put it, to tailor the relief granted to match the wrong which has been committed and threatened. ” Microsoft Corp v Plato Technology Ltd [1999] IP & T 1 (CA) ( Nourse LJ)

“(1) there is no rule that in any case of infringement of an intellectual property right the injunction granted will be a general injunction against infringing that right; (2) the task of the court is to tailor the injunction to match the wrong that has been committed and the wrong that is threatened to be committed in the future; (3) the discretion is a wide one: injunctive relief may in an appropriate case be refused altogether … or may be in the wide form hitherto customary; (4) … In my judgment, there is no “starting point” for the form of the injunction. Rather, … a proper assessment of the relevant factors may well lead to the grant of an injunction in the wider form . ” Nutrinova Nutrition Specialties & Food Ingredients GmbH v Scanchem UK Ltd [2001] FSR 43

The modern view See Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 494, [6]–[17] (Kitchin LJ) D found to infringe by using specific signs and straplines C argued that the words ‘or otherwise howsoever’ should be added to the injunction, in addition to prohibiting the specific infringements The starting point is that, as a general rule, an injunction will be granted to prevent further infringements: at [6] The injunction should be ‘proportionate … [and] define as clearly as possible what it is that [D] may not do’: at [7]

“The court will always have in mind that the scope of any injunction must be fair to the defendant and should not extend any further than necessary. If, for example, an injunction in general form would have the practical effect of stifling a legitimate business then it may be appropriate to craft a qualified injunction … All must depend upon the circumstances of the particular case. … Accordingly we have no doubt that it is appropriate to grant the general form of injunction sought by Specsavers … Such an injunction is necessary to prevent Asda from adopting straplines which incorporate some slight variation of the phrases ‘spec saver’ and ‘Spec savings’ but are equally offensive. ” Specsavers v Asda [2012] EWCA Civ 494 , [10], [14] (Kitchin LJ)

“In all these circumstances we have come to the conclusion that Specsavers is properly concerned to prevent further invasion of its trade mark rights in ways which it cannot foresee or describe with greater precision but which Asda has shown itself, by the careful and lengthy preparation of the campaign, to be fully capable of devising . We are therefore satisfied that it is necessary and proportionate to grant an injunction in respect of the Asda logo in the general form sought by Specsavers.” Specsavers v Asda [2012] EWCA Civ 494 , [17] (Kitchin LJ)

(4) Underlying policy

Justifications for the ‘general’ form Fairness to the patentee Coterminous with scope of the monopoly Reflects the defendant’s legal duty The dishonest or reckless infringer Allocation of risk onto the infringer Effectiveness and dissuasiveness

“ The advantage to the defendant of only having the injunction cover a particular article or process is clear. If he makes a change he will not be in breach and it will be up to the patentee to bring another action. However, the disadvantage to the patentee is equally clear. To obtain an injunction he has to establish [that] his monopoly … has been infringed, and … that further infringement is apprehended. From his point of view, it is the infringer who should seek guidance from the court if he wishes to sail close to the wind . In the normal course of events that would be reasonable. ” Coflexip SA v Stolt Comex Seaway MS Ltd [2001] RPC 9 (CA) , [19] (Aldous LJ)

“ In intellectual property cases [C] is concerned not only to stop exact repetition of [D’s] current activity which can be described with particularity, but to prevent fresh invasions of his rights in ways which cannot be foreseen or described exactly. The ingenuity of those who infringe … is boundless, and [C] cannot be adequately protected by orders which are cabined or confined. That is the reason for the standard forms of injunctions in such cases, with their inevitable references to ‘ otherwise infringing ,’ ‘substantial part,’ ‘to like effect,’ ‘colourable imitation,’ and ‘otherwise passing off’.” Spectravest Inc v Aperknit Ltd [1988] FSR 161 , 174–5 (Millet J)

“ it will be up to the defendant to work out how to ensure that there is no ultimate infringement . Of course, if he does take reasonable steps but they turn out unexpectedly to be ineffective, enforcement of the injunction by launching proceedings for contempt of court instead of a fresh action for infringement may be inappropriate. ”Grimme Landmaschinenfabrik GmbH & Co KG v Scott [2010] EWCA Civ 1110 , [134] (Jacob and Etherton LJJ)

Justifications for the ‘specific’ form Fairness to the (inadvertent) infringer Clarity and certainty Reflects the wrong that has been committed Limited to the findings of the court Avoids chilling effects (and other barriers to legitimate trade)

“… whenever a court at the end of a trial grants permanent injunctive relief, the purpose should be to give effect to its judgment on liability . … The injunction granted should protect the plaintiff from a continuation of the infringements of his rights by the threatened activities of the defendant. But the injunction must also be fair to the defendant . Although an injunction in wide standard form could meet the first of these requirements, I do not think it meets the second. ” Coflexip SA v Stolt Comex Seaway MS Ltd [1999] FSR 473 , [6] (Laddie J)

“ A defendant who has been enjoined must know what he can and cannot do. He should not be set a puzzle . As noted above, in most cases the precise outer limits of a patent claim are far from clear. This is confirmed … by the numerous cases in which the finding on infringement arrived at by the High Court is reversed in the appellate courts. A good example of this is Catnic . … An injunction not to infringe a patent incorporates all this imprecision . ” Coflexip SA v Stolt Comex Seaway MS Ltd[1999] FSR 473 , [16] (Laddie J)

“This is really a version of, ‘once a thief always a thief’ or ‘one strike and he is out’. I cannot accept that a defendant who has failed in a patent action should be treated this way simply because he has lost. He is not a social outcast, to be treated differently to the rest of the world. … The practical effect of a broad injunction and the threat of contempt proceedings is that most defendants will steer well clear of the patent . The result is that at least in respect of that defendant the patentee secures a wider monopoly than his patent should entitle him to. ” Coflexip , [28]–[29] (Laddie J)

Why the ‘specific’ form was rejected Laddie J’s injunction was not linked to the term of the patent (could be fixed by adding ‘during the lifetime of the patent’) The specific form was not limited to the statutory rights given by s 60 of the Act The specific form raises ‘considerable difficulties on construction’ ( Coflexip at [15] per Aldous LJ)

(5) Special cases

Derogations from the ‘general’ form On proportionality grounds: Vestergaard Frandsen SA v Bestnet Europe Ltd [2011] EWCA Civ 424, [56] (Jacob LJ); HTC Corp v Nokia Corp [2013] EWHC 3778 (Pat), [32] (Arnold J) Trivial or de minimis infringements , or where relief is refused: Coventry v Lawrence [2014] AC 822, [120] (Lord Neuberger PSC) To avert impact on public health : Edwards Lifesciences LLC v Boston Scientific Scimed Inc [No 3] [2018] EWHC 1256 (Pat), [14] (Arnold J)

“I accept that art 3(2) [of the Enforcement Directive] requires that any remedy granted by way of relief for trade mark infringement must be proportionate. In my view it does not follow that this Court’s normal practice of granting a general injunction is contrary to art 3(2), since it is not necessarily the case that a general injunction is disproportionate , although there may be specific circumstances in which a general injunction would be disproportionate. ” Interflora Inc v Marks and Spencer plc [2013] EWHC 1484 (Ch); [2014] FSR 2 , [20] (Arnold J)

“Counsel for M&S argued that general injunctions were always disproportionate because they had a chilling effect : the risk of contempt of court meant that the defendant had to be very cautious when deciding how to comply with the injunction … In my view this is a point which formerly had considerable force. More recently, however, it has been recognised that there is a procedural solution to this problem, which is the availability of declaratory relief .” Interflora , [21] (Arnold J)

“In any event, I do not think it would be appropriate for a first instance judge to depart from the established practice of this Court . That is properly a matter for the appellate courts to consider.” Interflora , [22] (Arnold J)

Other special cases Parallel imports : Oracle America Inc v M-Tech Data Ltd [2012] UKSC 27; [2012] 1 WLR 2026, [10] (Lord Sumption JSC) Second medical use claims: Warner-Lambert Co LLC v Actavis Group PTC EHF [2015] EWHC 2548 (Pat), [650]–[657] (Arnold J) Interim injunctions

Injunctions against intermediaries English courts now regularly make orders against intermediaries under Article 8(3) Information Society Directive (and Article 11 Enforcement Directive) which are in a highly specific form Provides certainty to D as to how to comply with injunction – lawful authority Specificity also supported by C to impose minimum standards of blocking (eg frequency, implementation time, type of blocking) Detailed form of order permits judicial scrutiny of mandatory measures May be contrasted with Erfolgsverbot (outcome prohibition) in certain civil law systems, which leave choice of measures up to the addressee of the injunction

“[The ISP] was to be prohibited from interfering with [C’s] intellectual property in general, without mentioning specific measures. It would be required by the injunction to achieve an outcome (namely the prevention of interference with the intellectual property right). The choice of the means of achieving that outcome was a matter for the [ISP] , which must do everything that could possibly and reasonably be expected of it. Whether a particular measure called for to prevent the interference was disproportionate … was to be reviewed only in the ‘enforcement process’, in which the question whether all reasonable measures had been taken or whether a breach of the injunction remained an issue would be examined.” UPC Telekabel Wien GmbH v Constantin Film Verleih GmbH, C-314/12, EU:C:2013:781 [16] (AG Cruz- Villalón )

The Respondent does, no later than 4.00pm on 3 March 2015 take all necessary steps to ensure that guidance in the form of Schedule 1 of this Order (“ Pregabalin Guidance ”) is published to at least the third parties mentioned in Schedule 2 of this Order (“ Initial Recipients ”). … Pregabalin should only be prescribed for the treatment of neuropathic pain under the brand name Lyrica® (unless there are clinical contra-indications or other special clinical needs e.g. patient allergic to an excipient, branded product unavailable etc which apply to Lyrica ® , when you should not prescribe Lyrica ® or pregabalin) When prescribing pregabalin for the treatment of neuropathic pain to patients you should (so far as reasonably possible): prescribe by reference to the brand name Lyrica®; and write the prescription with only the brand name “Lyrica”, and not the generic name pregabalin or any other generic brand. [2015] EWHC 485 (Pat)

(6) Comparative discussion

A comparative perspective: Australia Injunctions for all wrongs almost always granted in specific form: Schindler Lifts v Deblak (1989) 15 IPR 129, 172 (Pincus J) “it is in general undesirable, in my opinion, so to frame an injunction that it does little more than repeat the [defendant’s] general legal obligations, substituting for the ordinary remedies for breach of them the possibility of the drastic remedy of imprisonment. Further, it is in general undesirable so to frame an injunction that the question whether a breach has occurred is likely to be very debatable until settled by an order made in contempt proceedings.”

Consideration of foreign practice In Coflexip , Laddie J referred to the German and Australian practice in support of more specific orders: ‘correct and as applicable here as in Australia’: at [39] In Grimme , Jacob and Etherton LJJ referred to the German practice as a national procedural matter

“[German courts] have taken the view that a new infringement should be assessed in infringement proceedings and not in proceedings for contempt . A number of decisions illustrate the thinking behind this approach. For example in a judgment of the Reichsgericht of 1935 (RGZ 147, 27), the court said that ‘ the wording of the injunction has to follow the infringing action ’ and it explained that this was so because ‘in cases in which the defendant does not claim that he was entitled to make use of the patent, a wording of the injunction not related to the infringing action would make no sense’. Similar views can be found in RGZ (1929) 125, 391 and GRUR (1936) 905.” Coflexip , [40] (Laddie J)

“The German courts may have a different practice—attempting to tailor the injunction in advance. That sort of merely procedural consideration seems to us to be essentially a matter purely for a national court , which makes its decision in the context of its own national procedural rules and legal culture.” Grimme , [135] (Jacob and Etherton LJJ)

Patent injunctions: general or specific orders? Dr Jaani Riordan Barrister, 8 New Square LMU International Conference, Munich, 5 April 2019