All Case Law

Question 1

Synthon BV v SmithKlein Beecham [2006]

Answer 1

Is the invention novel? Enabling disclosure.

Enabling disclosure consists of two separate requirements which to be satisfied if an objection of lack of novelty is to succeed:
> Prior disclosure
> Enablement

Question 2

Asahi Kasei Koygo [1991]

Answer 2

Enabling disclosure.
The skilled person required not only the formula of the chemical compound but also the means by which the compound could be produced.

Question 3

Bristol-Myers Squibb Co. v Baker Norton Pharmaceuticals [2001]

Answer 3

Enabling disclosure.
Lecture given by the patentee’s Director of Research before the priority date on use of the drug Taxol to treat ovarian cancer amounted to ‘enabling disclosure’.

Lecture contained ‘clear and unmistakable’ directions to carry out what was being claimed in the patent.

Question 4

Windsurfing International Inc v Tabur Marine (GB) Ltd [1985]

Answer 4

Novelty and Use.
Prior use held to anticipate plantiff’s patent and patent declared invalid.

Booms of sailboard differed slightly in that they were straight (whereas those of the plaintiffs were curved), but while in use, there were flexible enough to end like those of the plaintiffs.

Question 5

Merrell Dow Pharmaceuticals v Norton Healthcare [1996]

Answer 5

Novelty and (secret) Use.

A patent for a substance which had been produced naturally before the application of the process was invalid.

The patent was invalidated after the discovery that the effect was produced naturally from an acid metabolite.

Patent infringement does not require that one should be aware that one is infringing: ‘whether or not a person is working [an] .. invention is an objective fact independent of what he knows or thinks about what he is doing..’.

Question 6

Dosage Regimes/ABBOTT RESPIRATORY [2010]

Answer 6

Novelty - use of known substances for new purposes.

Where it is already known to use a medicament to treat an illness, Art.54(5) EPC does not exclude that this medicament may be patented for use in a different treatment by therapy of the same illness.

Such patenting is also not excluded where a dosage regime is the only feature claimed which is not comprised in the state of the art.

Question 7

Actavis UK Ltd v Merck & Co [2008]

Answer 7

Novelty - use of known compounds for new purposes VS evergreening.

Patentability of new dosage regimes are not allowed.

Question 8

Mobil Friction Reducing Additve G2/88 [1990] EPOR 73.

Answer 8

Non-medical uses of known products and novelty of purpose patents.

Patent application for a friction reducing additive for motor engine lubrication oils.

Prior use? a prior US patent disclosed use of the same compound as a rust inhibitor additive for motor engine lubrication.

Problem: friction-reducing property inherent in, but not explicitly described by, the prior claim. Mobil had not invented a new product or process, but had merely discovered something new about an old product or process.

EPO Enlarged Board of Appeal: The word ‘available’ carries with it the idea that, for lack of novelty to be found, all the technical features of the claimed invention in combination must have been communicated to the public or laid open for inspection.

How to tell if infringing? Is customer inhibiting rust or reducing friction by using?

Question 9

PLG Research v Ardon [1995]

Answer 9

Inventive step
Patent should only be granted to meritorious inventions.
Intention is to distinguish inventions from mere ‘workshop improvements’.

The public should not be prevented from doing anything which was merely an obvious extension or workshop variation of what was already known at the priority date.

Question 10

Raychem Corp’s Patents [1998]

Answer 10

Inventive step: Common General Knowledge

The Common General Knowledge is the technical background of the notional man in the art against which the prior art must be considered.

It is not limited to material he has memorised and has at the front of his mind.

It includes all the material in the field he is working in which he knows exists, which he would refer to as a matter of course if he cannot remember it and which he understands is generally regarded as sufficiently reliable to use as a foundation for further work or to help understand the pleaded prior art

Question 11

Alcan/Aluminium Alloys [1995]

Answer 11

Inventive step: EPO approach

EPO Board sees no legal basis for imposing on the organs of the EPO one particular method for the assessment of inventiveness under Article 56 EPC, where that Article has left the methods open. Thus the problem and solution approach ought to be considered as one among other possible approaches, each of which has its own advantages and drawbacks.

Question 12

Pozzoli SPA v BDMO SA [2007]

Answer 12

Inventive step: UK approach

(1) Identify the notional ‘person skilled in the art’. Identify the relevant common general knowledge of that person.
2) Identify the inventive concept of the claim in question or, if that cannot readily be done, construe it.
3) Identify what, if any, differences exist between the matter cited as forming part of the ‘state of the art’ and inventive concept of the claim or the claim as construed.
4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps that would have been obvious to the person skilled in the art, or do they require any degree of invention?

Question 13

Haberman v Jackel International Ltd [1999]

Answer 13

Inventive step can be simple.

Mrs. Haberman had the patent for the ANYWAYUP Cup, a trainer cup for toddlers.
▪ The plaintiff’s cup had a valve fitted to the lid, which would open when the baby sucked
and close when it stopped, thereby solving the problem of leakage.
▪ The defendants produced and launched a rival product ‘Super Seal’.
▪ In an action for infringement, the defendants claimed that the plaintiff’s patent was
invalid on the grounds of ‘obviousness’.
▪ Laddie J found that, even although the invention only involved a ‘very small and simple
step’, it was sufficiently inventive to deserve the grant of a patent. The invention had
solved a problem to which many had sought a solution, that is, leakage in infant trainer
cups.

Question 14

Generics (UK) Ltd v H Lundbeck

Answer 14

Determining Obviousness.

The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances.

These may include such matters as the motive to find a solution to the problem the patent addresses, the number and the extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.

Question 15

MedImmune Ltd v Novartis [2012]

Answer 15

Determining Obviousness - obvious to try?

‘‘One of the matters which it may be appropriate to take into account is whether it was
obvious to try a particular route to an improved product or process. There may be no
certainty of success but the skilled person might nevertheless assess the prospects of success
as being sufficient to warrant a trial. In some circumstances this may be sufficient to render
an invention obvious. On the other hand, there are areas of technology such as pharmaceuticals
and biotechnology which are heavily dependent on research, and where workers are faced with
many possible avenues to explore but have little idea if any one of them will prove fruitful.
Nevertheless they do pursue them in the hope that they will find new and useful products. They
plainly would not carry out this work if the prospects of success were so low as not to make
them worthwhile. But denial of patent protection in all such cases would act as a significant
deterrent to research.

Question 16

Conor v Angiotech [2008]

Answer 16

Determining Obviousness: Reasonable expectation of success.

‘the notion of something being obvious to try was useful only in a case where there was a
fair expectation of success. How much of an expectation would be needed depended on the
particular facts of the case.”

Question 17

Novartis AG v Generics

Answer 17

Determining Obviousness: Reasonable expectation of success.

55. What is a reasonable or fair expectation of success will again depend upon all the
    circumstances and will vary from case to case. Sometimes, as in Saint Gobain, it may be
    appropriate to consider whether it is more or less self-evident that what is being tested ought
    to work. So … simply including something in a research project in the hope that
    something might turn up is unlikely to be enough. But I reject the submission that the court can only make a finding of obviousness where it is manifest that the test ought to work. That
    would be to impose a straitjacket on the assessment of obviousness which is not warranted by the statutory test and would, for example, preclude a finding of obviousness in the case where
    the results of an entirely routine test are unpredictable.

Question 18

Cellular proliferate disorders/ONCOLYTICS

Answer 18

Determining Obviousness: Reasonable expectation of success.

In Cellular proliferative disorders/ONCOLYTICS, the Board stated that a
reasonable expectation of success ‘implies the ability of the skilled
person to predict rationally, on the basis of the knowledge existing before
a research project is started, the successful conclusion of the project
within acceptable time limits’.

Question 19

Teva UK Ltd v Leo Pharma A/S [2015]

Answer 19

Determining Obviousness: Reasonable Expectation of Success.

The Court of Appeal disagreed with the lower court that found a combination patent to be
obvious on the basis of the ‘obvious to try with a reasonable expectation of success’ doctrine.
Reversing the decision, Jacob LJ held that the result of the combination was unpredictable.
The patents concerned two well-known compounds, calcipotriol and betamethasone, which
were previously used individually in the treatment of psoriasis. These two compounds were
claimed in combination with a known solvent called Arlamol E.
Jacob LJ held that choosing a particular solvent was inventive. He noted that ‘identifying a
non-aqueous solvent which would actually work to produce a stable ointment, was not easy’
and that ‘[f]inding one was a research project’. The reason for this is that ‘there was no
sufficient expectation of success. Yes, a particular candidate might work, but it was far from
certain that it would’.

Question 20

Generics (UK) Ltd v. Daiichi [2009]

Answer 20

Determining Obviousness: Unexpected results.

The Court of Appeal stated that ‘Levofloxacin is not just twice as active as ofloxacin (which
might be expected)’, emphasising the unexpected and surprising high solubility of the
enantiomer* as compared to its racemate ofloxacin. The Court of Appeal concluded that
‘[o]nly a curmudgeon would say there was no invention here’.

Question 21

Dyson Appliances Ltd v Hoover [2001]

Answer 21

Inventive Step: Prejudices of the industry

Dyson invented a bagless vacuum cleaner, whose use of cyclones rids the air of dirt. Before the
priority date no vacuum cleaner manufacturer had commercially sold or proposed a bagless
vacuum cleaner.
According to Sedley LJ:
89. The vacuum-cleaner industry was functionally deaf and blind to any technology which
did not involve a replaceable bag. The fact that the handicap was entirely economically
determined made it if anything more entrenched. The industrial perception of need was
consequently, in the judge’s happy coinage, bagridden. It is entirely in accordance with what we
know about innovation that this commercial mindset will have played a part in setting the
notional skilled addressee’s mental horizon, making a true inventor of the individual who
was able to lift his eyes above the horizon and see a bag-free machine’.

Question 22

Human Genome Sciences v Eli Lilly & Co [2012]

Answer 22

Industrial application.

Held that in relation to a new protein and its encoding gene, it was sufficient that the applicant demonstrate a ‘plausible’ or ‘reasonably plausible credible’ use.

In this case because the protein was part of the TNF ligand superfamily of cytokines (which acted as treatments for inflammation and immune responses) it was sufficient to assign that same role to this
new member of the family (even when no wet trials had been conducted to establish the link)

The patent had to demonstrate a real possibility of exploitation - the absence of experimental activity of the protein was not fatal; a plausible use could suffice.

Question 23

Biogen v Medeva and Kirin Amgen

Answer 23

Sufficiency/Insufficiency.

Under Biogen the question to ask is:

Whether the claims cover other ways in which they might be delivered, ways which owe nothing to the teaching of the patent or any principle which it disclosed.

Product-by-process claim towards a DNA molecule which could express the antigens of the Hep B virus in a host cell.

The breadth of a claim must not exceed the contribution to the art. However, where the claim is to a product which was previously unavailable, the product itself is the technical contribution to the art. Thus it is only necessary to show one way of making it to gain protection for the product itself regardless of how it is made.

Question 24

Generics (UK) v Lundbeck

Answer 24

Sufficiency of Disclosure

This case concerned a product patent that disclosed only one way of producing the claimed compound.

It was confirmed that for product claims one method of manufacture disclosed in the patent specification will be sufficient, and that neither the UK patent law nor the EPC require that the product claims must disclose all methods of producing the patent.

Question 25

Haliburton Energy Services Inc v Smith International (North Sea) Ltd [2006]

Answer 25

Sufficiency of Disclosure.

Patent for a rotary cone drill bit was held invalid for insufficiency because it required too much work from the skilled person to reproduce the various features of the invention.

If a patent involves an unreasonable amount of work in light of all the relevant circumstances then it would be regarded as not containing an enabling disclosure.

Question 26

United Wire v Screen Services [2001]

Answer 26

Direct infringement: Patent for a product - right to make a product.

Repair is one of the concepts (like modifying or adapting) which shares a boundary with “making” but does not trespass on its territory. The right to repair… is a residual right forming part of the right to do whatever does not amount to making the product.

Question 27

Schutz (UK) Ltd v Werit (UK) Ltd [2013]

Answer 27

Direct infringement: Patent for a product - right to make a product.

Schutz sued Werit in relation to a patent for an intermediate bulk container - the inventive and novel concept of which was the way in which the cage was made.

A third party was replacing the plastic bottles made by Schutz with new bottles it bought from Werit and selling the IBC in direct competition with Schutz.

At the supreme court it was held that this did not constitute an infringement as the bottle was not an integral feature of the novel/inventive claims.

Question 28

Pioneer v Warner Music [1995]

Answer 28

Direct Infringement: Product of a process

This dispute related to a patent for manufacture of master disks by Pioneer.

MDs were used for mass production of CDs and did not have the capacity to play music. The patent covered the process of making the MDs but not the process of producing the CDs from the MDs.

Pioneer initiated infringement proceedings against Warner who imported the CDs into the UK - claimed that they were made from MDs and hence the patented process.

The court said that the product must result directly from the process and ‘directly’ means without any material or important steps between the process and product in question.

Warners CDs were derived from the MDs BUT it required three additional stages of manufacture.

Thus, importing the CDs by Warner was held not to infringe Pioneer’s patent.

Question 29

Grimme v Scott [2010]

Answer 29

Indirect Infringement.

Grimme’s patent was for a potato separating machine that used two counterrotating pairs of rubber rollers.

Scott was selling a potato separating machine called ‘Evolution’ which had steel rollers - this of itself did not directly infringe.

However, the machines were designed so that the rollers are interchangeable. Thus those supplied with steel rollers can be changed by the ultimate user (or a middleman) over to rubber rollers. Moreover they were marketed as such.

Court of Appeal held that the supply by Scott of steel-rollered Evolution machines was a contributory infringement contrary to Section 60(2) PA.

It was enough if the supplier knew (or it was obvious in the circumstances) at the time of his offer to supply or supply that some ultimate users would intend to use, adapt or alter the “means essential” so as to infringe.

Question 30

Catnic Components Ltd v Hill & Smith Ltd [1982]

Answer 30

Infringement/Claim interpretation in the UK.

Does a lintel at an angle of 84 degree infringe a patent to a ‘vertical’ lintel?

A literal interpretation of the claims would have limited the claimants patent to lintels at 90 degree - thus no infringement.

Purposive construction: a patent specification should be given a purposive construction rather than a literal one. The claims should be read through the eyes of the PSA.

What is the purpose or function of the invention?
The PSA would understand the reason the patent specified vertical was related to the load-bearing capacity of the lintel.

A 6 degree movement away from the 90 degree only led to a 0.6 percent reduction in the load bearing capacity of the lintel.

This meant that the defendants lintel effectively performed the same purpose or function as the claimaints lintel.

Question 31

Improver V Remington [1990]

Answer 31

Claim interpretation: UK
Guidance on how to interpret a claim when there is a functional equivalent.

Patented product trapped hairs in a rotating coiled helical spring which then pulled them out of the skin.

Defendants product operated in the same way but used a rubber rod.

Under the literal interpretation the defendants product fell outside of the patent scope.

Court asked three questions:
1) Does the variant have a material effect on the way the invention works? If yes, the variant is outside the claim. If no:

2) Would this (i.e. that the variant had no material effect) have been obvious at the date of publication of the patent to the PSA? If no, the variant is outside the scope of the claim. If yes:
3) Would PSA have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim.

Yes to first two, no to last. The words in the claim specifically referred to a helical spring and did not mention any other mechanism it was not possible to stretch their meaning to include a rubber rod.

Question 32

Kirin Amgen v Hoechst [2005]

Answer 32

Claims interpretation: UK.
Considered whether a protein manufactured by gene-activation infringed a patent relating to production of the same protein by recombinant DNA technology.

Claims construction is objective in the sense that it is concerned with what a reasonable person to whom the patent is addressed would have understood the author to be using the words to mean.

Superseded by Actavis v Eli Lilly [2017]

Question 33

Actavis v Eli Lilly [2017]

Answer 33

Eli Lilly patent for pemetrexed sodium alongside vitamin B12.

Actavis intended to launch a generic product with a different salt form of pemetrexed.

The issue was the correct approach to the interpretation of patent claims, particularly the requirement of EPC 2000 to take account of “equivalents”.

Lord Neuberger:
1) Does the variant infringe any of the claims as a matter of normal interpretation; and, if not; (held to be No)

2) Does the variant nonetheless infringe because it varies from the invention in a way or in ways which is or are immaterial?

If the answer to either issue is ‘yes’, there is an infringement; otherwise there is not.

The court held that Actavis directly infringed Lillys patent after applying reformulated Improver questions:

1) Does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?
Yes

2) Would it be obvious to the PSA, 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?
Yes

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?
No

Question 34

Smith Kline & French v Evans [1989]

Answer 34

Defences to claims of patent infringement: Private & non-commercial uses.

Section 60(5)(a) an act ‘done privately and for the purposes which are not commercial’ are exempt from patent infringement claims.

The difficult questions is whether acts done primarily for purposes which are not commercial, but do have a commercial benefit, are infringing acts… the court is required to consider what the purposes of the acts were. It is a subjective test and if, on the evidence, the court should find that there was a dual purpose, then in those circumstances there would be infringement.

Question 35

Monsanto v Stauffer Chemical [1985]

Answer 35

Defence to patent infringement: Experimental use defence.

Counts If the purpose of the activity was to discover something unknown or to test a hypothesis or testing whether the patented invention works.

On the other hand: if there is a commercial motive behind the experimental use, or where the purpose of the trial was ‘mainly directly or indirectly to generate revenue’ it is likely to fall outside of the scope of exception.

Monsanto v Stauffer Chemical: “trials carried out in order to demonstrate to a third party that a product works, or in order to amass information to satisfy a third party, whether a customer or regulatory bodies, that the product works as its maker claims are not, to be regarded as acts done ‘for experimental purposes’.

English authorities draw a distinction between the application of the experimental use exemption to activity conducted for the purpose of discovering something new about the subject matter of the invention, and merely verifying what is already known. So, to the extent – and this is a matter of fact in each case - that trials and tests on a substance for regulatory approval of that substance are not discovering something new, the exemption will not apply.

Question 36

SKF v Evans

Answer 36

Defences for patent infringement: experimental use that relates to the subject-matter of the invention.

“The purposes must relate to the claimed subject-matter of the patent in suit in the sense of having a real and direct connection with the subject-matter”

Example: A person who wished to test a cure for cancer they had developed by applying it to a genetically modified mouse could not use this as a defence against a claim by the patentee of the mouse.

The experimental purpose is directed towards the cure for cancer not the mouse.

If it was otherwise, the patentee of diagnostic kits would never receive any remuneration because all uses of the kit would be experimental (Bently).

Question 37

Bolar Exception

Answer 37

Section 60 (5) (i) PA
There is no infringement if it 'consists of:

i. an act done in conducting a study, test or trial which is necessary for and is conducted with a view to the application of paragraphs 1 to 5 of Article 13 of Directive 2001/82/EC [relating to veterinary medicinal products] or paragraphs 1 to 4 of article 10 of Directive 2001/83/EC [relating to medical products for human use] or
ii. any other act which is required for the purpose of the application of those paragraphs.

Question 38

Lubrizol v Esso

Answer 38

Section 64(1)
Where a patent is granted for an invention, a person who in the United Kingdom before the priority date of the invention:

(a) does in good faith an act which would constitute an infringement of the patent if it were in force, or
(b) makes in good faith effective and serious preparations to do such an act, has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the grant of the patent; but this patent does not extend to granting a license to another person to do the act.

Section 64(2) - if the acts or preparations are done in the course of business the previous user can:

a) authorise their business partner to do the act;
b) or assign or transmit that right on death to another.

Question 39

University of Southampton’s Application [2006]

Answer 39

What is an inventive contribution?

‘Those who contribute enough information by way of necessary enablement to make the idea patentable would count as “actual devisors”, having turned what was “airy-fairy” into that which is practical. On the other hand those who contribute no more than essentially unnecessary detail cannot on any view count as “actual devisors”.

Question 40

Staeng Ltd’s Patent [1996]

Answer 40

Employee inventions.

In applying Section 39(1) one should:

First decide what constitutes the employees’ normal duties;

Then decide whether the circumstances were such that an invention might reasonably be expected to result from the execution of those duties.

Question 41

Electrolux Ltd v Hudson [1077]

Answer 41

Employee Inventions

Mr Hudson was employed as a senior storekeeper for the electrical manufactures Electrolux.

He devised a new kind of adaptor to facilitate more easily the connection of the dust bag to a vacuum cleaner.

Electrolux claimed to be the owner of the resulting patent, based on a very broad term in Hudson’s contract of employment, which stated that anything invented in relation to any of Electrolux’s products would belong to the company.

The judge held that Hudson was employed as a storekeeper. It was not his responsibility to invent.

Question 42

Greater Glasgow Health Board’s Application [1996]

Answer 42

Employee inventions.

A junior doctor was employed as a registrar by the Health Board in the Department of Ophthalmology.

His job description stated that his responsibilities were mainly clinical but indicated that he was also expected to participate in teaching, though it was not described as duties.

While revising for fellowship examinations at home, he invented a device for examining the retina.

The employer claimed ownership.

Jacob J held that while the device was a useful accessory to the doctor’s contracted work, it was not an integral part of it.

The judge also took into account the fact that the inventor’s manager stated that the junior doctor would not have been failing in his duties if he had not invented anything.

Question 43

Harris Patent [1985]

Answer 43

Harris was employed as a manager in the wey valve department of a company.

His duties involved advising potential customers and providing after-sales service.

During the redundancy period, Harris designed a new valve, which was an improvement of the valves sold by his firm, and sought the grant of a patent for it.

His employer claimed ownership of the patent.

The court held: Harris’ normal duties did not include invention, but were concerned with sales and after-sales service, thus falling outside s 39(1)(a).

Question 44

LIFFE v Pinkava [2007]

Answer 44

Employee Inventions.

Dr Pinkava was employed by LIFFE, which operated the London Futures market, as a manager to work and develop some financial instruments.

While working for LIFFE he invented a system of electronic trading for financial instruments not previously traded.

Pinkava applied for patents.

LIFFE claimed ownership of the patents.

The key question is what was the employee employed to do?
Primary source is the contract of employment.

But contract is not the sole arbiter. The contract and nature of the job evolve over time expanding or contracting. The key question is whether the employee is employed to innovate and what general area his innovation duties cover.

LIFFE awarded ownership.

Question 45

Kelly v GE Healthcare [2009]

Answer 45

Employee Compensation.

The claimants were two research scientists who co-invented a radioactive cardiac imaging agent, which was marketed under the TM Myview.

The product was very successful (sales exceeding £1 billion).

The value of the benefit, which their employer could be said to have derived from the patents, was based on a number of factors, including the finding that patent protection would strengthen the company’s bargaining position when it came to corporate deals.

Floyd J valued this as in the region of £50 mln.

It was held that the patent had provided an ‘outstanding benefit’.

The judge decided that 3% of the value of the benefit was just and made compensation orders totalling £1.5 mln.

Question 46

Shanks V Unilever

Answer 46

During his employment with Unilever UK Central Resources Ltd (“CRL”), Professor Shanks developed and created the technology now found in most glucose testing products.

The IP rights in the ECFD were later assigned to the wider company group, Unilever plc (“Unilever”), who filed successful patent applications across the globe. Through the mass-licensing of its IP rights over the invention, Unilever went on to generate £24.55m in total earnings.

After a sea of unsuccessful appeals, the Supreme Court has now ruled in favour of Professor Shanks, and has granted him £2m in compensation.