Patent infringement: exploring multi-territorial issues

Patents are powerful tools that can be used to stop unauthorised parties from performing certain acts, such as making a patented product or using a patented process.  However, patents are territorial in nature such that a patent has no effect, in terms of being useable to prevent unauthorised parties from performing infringing acts, outside of the territory in which it was granted.  For example, a UK patent protecting an invention cannot be used to stop somebody from exploiting the invention in the USA, unless there are also infringing acts taking place in the UK.

Naturally, this leads to interesting, and often complex, questions of law such as: can patent infringement be avoided by performing acts across multiple territories?  This question is particularly pertinent when considering computer-implemented inventions, where computing resources can be spread across multiple territories and data easily transferred between them.  The short answer is: it depends.

In this article, we review some of the key pieces of UK case law looking at this issue, and what steps can be taken to strengthen patent applications in this regard.

 

Menashe v William Hill [2002] EWCA Civ 1702

This is an important decision that has influenced the case law surrounding the above question over the last two decades.

In this case, Menashe owned a UK patent protecting a gaming system for playing an interactive casino game, the gaming system including:

• a host computer;
• a terminal computer forming a player station, the terminal computer being situated at a location remote from the host computer;
• a communication means for connecting the terminal computer to the host computer; and
• a program means for operating the terminal computer.

William Hill allegedly infringed Menashe’s patent by supplying their UK customers with a CD containing software which, when installed on a customer’s personal computer, turned their computer into a terminal computer which was able to communicate with a host computer, thereby allowing the customer to play a casino game.  In other words, William Hill were effectively enabling their customers to use a gaming system according to Menashe’s patent.

However, William Hill argued that, because their host computer was located in the Caribbean, they were not infringing the patent in question.  More specifically, William Hill argued that, for there to be infringement, the CD must be intended to be combined with the other elements of the gaming system, including the host computer, in the UK in order to put the invention into effect in the UK, this test not being satisfied in view of the location of their host computer.

Menashe presented counterarguments to the effect that not all of the elements of the gaming system need to be in the UK for the CD to put the invention into effect in the UK.  More specifically, Menashe argued that the fact that William Hill’s host computer is located outside of the UK does not mean that the invention is not put into effect in the UK in view of (i) William Hill’s customers and their terminal computers being in the UK, (ii) the CDs being supplied to the UK customers and (iii) the fact that William Hill were supplying the CDs with this in mind.

On appeal, it was decided that it does not matter where the host computer is located.  Rather, to determine whether the supply of the CD was intended for putting the invention into effect in the UK, it is pertinent to ask the following two questions:

• Who uses the claimed system?
• Where do they use it?

In this case, it was decided that it was William Hill’s UK customers who were using their terminals in the UK and, effectively, using the host computer in the UK.  In other words, William Hill’s customers were deemed to have been using the whole gaming system as if it were in the UK such that they were, in substance, using the gaming system in the UK.

Therefore, William Hill were deemed to have been indirectly infringing Menashe’s patent on this basis, by virtue of supplying their customers in the UK with a means relating to an essential element of an invention (i.e., the CD), where the means were suitable for and intended for putting the invention into effect in the UK.

 

RIM v Motorola [2010] EWHC 118 (Pat)

In this case, Motorola owned a UK patent directed to a method of operating a messaging gateway system operable to (i) receive messages from a remote messaging system, (ii) construct transmittable messages including portions of the messages received from the remote messaging system and (iii) receive, from a wireless subscriber device, a set of commands for translation and onward transmission to the remote messaging system such that a user of the subscriber device can control the operation of the remote messaging system.

RIM were allegedly infringing Motorola’s patent by operating a system including a server that periodically polled for new emails from a user’s private email server.  If any emails met a user’s criteria for forwarding to a handheld device (in this case, a BlackBerry device), they were sent to a “Relay” for onward transmission, ultimately arriving at the user’s handheld device.

When considering RIM’s server to constitute a messaging gateway system according to Motorola’s patent, the judge found that (i) the method of operating the messaging gateway system was offered for use by RIM in Canada, not in the UK and (ii) when applying the questions set out in Menashe v William Hill, RIM were the users of the method of operating a messaging gateway system, and that they operated this method in Canada.  Therefore, it was deemed that there would be no infringement on this basis.

Notably, the fact that subscribers in the UK could use RIM’s server (the messaging gateway system) to communicate with a remote messaging system did not change the finding that there would be no infringement, in view of the method being performed at the server’s end rather than the user’s end.

 

Illumina v Premaitha [2017] EWHC 2930 (Pat)

In this case, it was assessed whether a process performed by Premaitha infringed various patents, including two patents licensed to Illumina, relating to genetic testing of a foetus via a blood sample obtained from the foetus’s mother.

More specifically, Premaitha performed a process which included the steps of receiving a blood sample from a patient in the UK, carrying out preparatory steps and sequencing processes in the UK, and sending raw data comprising the results of sequencing reads electronically to Taiwan.  The main data analysis was then performed in Taiwan following which a report was generated, the report being sent back to the UK for unpacking such that it could be printed, stored and shared with the patient.

Premaitha submitted that the steps of detection and analysis, crucial to the inventive concepts of the patents in question, took place outside of the UK.  They submitted that Illumina’s allegations of infringement were dependent on the data analysis steps and that, because those steps were not carried out in the UK, the process was therefore not used in the UK.

Illumina contended that (i) the laboratories located in the UK are indifferent as to where the sequencing information is processed, (ii) the processes managed by human operators outside the UK are non-specialised tasks and (iii) the steps undertaken in Taiwan that are relevant to infringement were all undertaken by a computer.  They submitted that a finding of non-infringement would render claims of this kind impossible to assert as a practical matter.

This decision boiled down to the question of where, in substance, Premaitha’s process was being used.  It was decided that the answer to this question was in the UK because the blood test was performed in the UK, the sequencing machine was operated in the UK, and the information so obtained was transmitted to Taiwan for a pre-determined set of automated computer processes to be applied to it.  The output of the computer processing was then sent back to the UK for use in the UK.

Given that the process is operated, in substance, in the UK, and based on the finding in Menashe v William Hill that it did not matter where the computer was situated, it was decided that Premaitha were infringing the patents in question.

The judge also accepted Illumina’s submission that any other result would make it far too easy to avoid infringement of patents of this nature, given the ease of digital transmission and the ability to off-shore computer processing.

 

Promptu v Sky [2021] EWHC 2021 (Pat)

In this case, proceedings were brought against Sky, who were allegedly infringing Promptu’s patent directed to generating speech content responses in response to receiving a multiplicity of speech channels from a multiplicity of users.

More specifically, Sky’s allegedly infringing “Sky Q” system included a voice platform hosted on servers in the UK, an automatic speech recognition (ASR) function which may or may not have been implemented in the UK, and a content engine hosted on servers in Ireland.

In Sky Q’s system, in response to a user pressing a voice activation button on their remote control, a “WebSocket”, individual to the user, was opened, which involved sending the user’s IP address to the voice platform.  When multiple users activated this voice command function at the same time, the voice platform received data from each user and separated each user’s speech using their IP addresses.  After receiving input from the ASR function and the content engine, the voice platform then sent a response back to each user.

In view of the preceding three cases discussed above, the judge derived the following general principles: (a) by whom and where, in substance, is the method being used and (b) it is relevant to take into account that for some steps it simply may not matter where processing power is located.

In the present case, all features were deemed to take place in the UK, apart from the speech recognition and content engine access.

It was decided that the processing of speech signals took place at a server remote from a user, and that the central part of the processing at the server involved (i) partitioning the incoming speech signals and subsequently providing a unique recognised speech content response and (ii) individually delivering services accordingly. 

Content engine access and speech recognition were deemed subordinate in the Sky Q system.  Therefore, it was deemed that it did not matter where these two functions took place, a conclusion reinforced by the fact that Sky did not even know themselves where the ASR function took place for any given user interaction.  More specifically, the judge commented that the fact that the content engine access and speech recognition were (sometimes) performed outside of the UK did not mean that performance of the method as whole was performed outside of the UK, it not being the right principle that infringement can be avoided by performing some parts of a method outside of the UK.

Notably, the judge also commented that, even though user input triggers part of the method (i.e., sending data from the user end identifying the user), it is not the user who puts the method into effect.

It was therefore decided that the method is performed, in substance, by Sky, in the UK, such that Sky would have been infringing Promptu’s patent, had it been valid.

 

Sandoz v Biogen [2024] EWHC 2567 (Pat)

Biogen own a patent directed to a method of evaluating a patient’s risk of developing Progressive Multifocal Leukoencephalopathy (PML), the method including the steps of determining, in a serum or plasma sample of the patient, an anti-JC Virus (JCV) antibody titer, where the anti-JCV antibody titer is determined by an ELISA assay.

In this case, Sandoz were allegedly infringing Biogen’s patent by virtue of offering a method according to Biogen’s patent for use by clinicians in the UK.

The part of the allegedly infringing method that took place in the UK included the steps of ordering relevant materials, taking a blood sample from a patient using the materials so provided, and placing an order for JCV testing including scheduling a pickup of the patient’s blood sample.  The blood sample was then taken outside of the UK, where an assay was conducted involving determining an anti-JC Virus antibody titer expressed as an index value.  The result of this test was then sent back to the clinician in the UK.

The judge concluded that there is no doubt that the step of determining the anti-JC Virus antibody is carried out outside of the UK, irrespective of the fact that the blood sample is taken in the UK, because the serum or plasma sample for testing is prepared outside of the UK, along with the performance of all the other steps of the assay.

A more subtle point was the consideration of the resulting index value.  If this number was greater than 1.5, then it was determined that the patent is at high risk of developing PML.  This value was also determined outside of the UK, as no exercise of clinical judgement was required.  Even though the clinician may go on to make their own assessment of the clinical risk, any such assessment would not have been part of the claimed method.

At best, the clinician can be said to be using the result of the of the method in the UK, which may be useful to them, but it cannot be said that the method specified in Biogen’s patent is used in the UK.

Therefore, it was concluded that there is no infringement on this basis.

 

Take-aways

Key points to take-away from this article include:

• Infringement of a UK patent can still occur even if certain parts of an invention are performed outside of the UK, particularly when those parts involve standard computing steps.
• To assess whether there might be infringement of a UK patent when an invention is being implemented across multiple territories, it is important to ask the questions: who is infringing the patent, and where, in substance, are they doing so?
• Having patents in multiple territories does not generally address the issue of an infringing party performing steps across multiple territories.
• When preparing a patent application, it is essential to consider who will infringe the patent and ensure that there is adequate protection in place. It is also advisable to prepare a patent application such that an invention is performed by a single apparatus within a single territory, where possible.
• Unitary Patents (UPs) partly address these issues, at least in Europe, by virtue of being effective across multiple European countries.
• We strongly recommend a patent attorney is consulted to minimise issues arising in this regard. Here at Wynne-Jones IP, we regularly prepare patent applications with these considerations at the forefront of our thinking.