Patent Caselaw

Question 1

What’s the significance of the Merrel Dow ‘Compound A, Compound B’ case?

Answer 1

SIGNIFICANCE: One doesn’t need to know they are working an invention to be considered to have worked it.

STORY: The claimant got a patent for compound A. Once ingested, compound A transformed into compound B, wherein compound B had a medicinal effect. The claimant attempted to patent compound B.

DECISION: The judge found that compound B had been disclosed, because if you took compound A, you would have worked the invention.

IMPACT:

Contradicts with the mobile oil second use case!!

Question 2

What is the significance of the Wesley Jessen case?

Answer 2

SIGNIFICANCE: If you disclose to A and A does not understand BUT you do not prevent A from disclosing the invention to someone else, who may understand, you have disclosed the invention.

STORY: The claimant produced contact lenses and offered them to consumers to trial and feedback on. There was nothing in the terms and conditions of the agreement that would prevent them from disclosing the lenses to someone else.

DECISION: The courts found this to be a disclosure.

IMPACT: Sign NDAs!

Question 3

What is the significance of the Synthon v SmithKline Beecham ‘salt’ [UKHL] case?

Answer 3

SIGNIFICANCE (3): (1) State-of-the-art includes both disclosure and enablement. (2) Stating the existence of something is not necessarily enabling. (3) Enablement refers to the ordinary skilled person and their ability to perform the invention based on the disclosure. STORY: Both the claimant and the defendant produced Paroxetine salt for medical use. The claimant filed its application In 1997, but before it was published in 2000, the defendant filed theirs, claiming priority to an earlier UK patent application filed in 1999. The claimant brought revocation proceedings, however, the claimant’s application contained mistakes, meaning that the disclosure was not enabling for the skilled person.

Question 4

What is the significance of the Pozzoli v BDMO [EWCA] case?

Answer 4

SIGNIFICANCE: The CoA formulated ‘Pozzoli’ questions to assess obviousness that included:

1. Identifying the PSA and their common general knowledge
2. Identifying the inventive concept of the claim in question
3. Identifying differences between the prior art and the claim in question
4. View without any knowledge of the claimed invention, do those differences constitute steps that would have been obvious to the PSA? Or do they require some degree of invention?

Question 5

What is the significance of the France Technip SA patent case?

Answer 5

SIGNIFICANCE (2): (1) The PSA may be a single person or a team of people, or even a multidisciplinary team. (2) The PSA will share the common prejudices or conservatisms in the field.

Question 6

What is the significance of the Lux Traffic v Pike Signals RPC?

Answer 6

SIGNIFICANCE (2): There is no need to prove that anyone actually saw the invention as long as you can prove the invention was disclosed in public.

STORY: The claimant trialed their traffic light system in public. They were brought up on novelty.

Question 7

What is the significance of the Actavis Group v ICOS [UKSC] case?

Answer 7

SIGNIFICANCE: The skilled person has no inventive capacity, but they can move inventions forward in a non-inventive way.

Question 8

What is the significance of the Onco-Mouse [EPOR] case?

Answer 8

SIGNIFICANCE (3):

(1) One of the few cases that look at public morality. Namely: “Should we create creatures for the sole purpose of suffering?”
(2) The terms ‘animal variety’ and ‘animal’ are not equivalent
(3) If the technical feasibility of an invention is confined to a particular variety, as opposed to an entire genus, it is excluded from patentability.

STORY: The researchers made transgenic mice who were predisposed to get cancer so that they could treat it with their drugs.

Question 9

What is the significance of the Transgenic/NOVARTIS II [EPO] case?

Answer 9

SIGNIFICANCE (2): (1) The courts concluded that plant variety, individually claimed, can’t be patented, no matter how it was made. (2) If it covers the whole genus of a particular plant, it’s patentable, but if it’s just a variety of a genus it’s not patentable.

Question 10

What is the significance of the Tomatoes II [EPO] case?

Answer 10

SIGNIFICANCE: The exclusion of plants and animals exclusively obtained by biological processes is contentious.

STORY: EBoA concluded that one could get a patent for a tomato produced by an essentially biological process. However, the European Commisson said no that’s not what we meant. The Techincal board said an implementing board cannot overturn the decision of the EBoA.

Question 11

What is the significance of the Diagnostic Methods [EPO] case?

Answer 11

SIGNIFICANCE: The courts clarified that the rationale for the exclusion of medical methods from patentability is based on the fact the medical and veterinary practitioners should be allowed to freely practice medicine, including diagnostic investigative methods.

Question 12

What is the significance of the Magnetic Resonance/WARF 2010 case?

Answer 12

SIGNIFICANCE: [Contribution to the definition of ‘surgical methods’]. The injection of a contrast agent was found to be non-surgical, despite the breaking of the skin.

Question 13

What is the significance of the Anaesthetic Gas/MEDI-PHYSICS 2010 case?

Answer 13

SIGNIFICANCE: [Contribution to the definition of ‘surgical methods’]. The administration of anaesthethic was found to be non-surgical.

Question 14

What is the significance of the Blood Flow Instrument/TRANSONIC 2011 case?

Answer 14

SIGNIFICANCE: [Contribution to the definition of ‘surgical methods’]. Using a device to remove bloody from the body and then put it back was found to be surgical.

Question 15

What is the significance of the Blood Separation/FENWAL 2011 case?

Answer 15

SIGINIFICANCE: [Contribution to the definition of ‘therapeutic methods’]. The treatment of blood was found to be therapeutic.

Question 16

What is the significance of the Cornea/THOMPSON 1995 case?

Answer 16

SIGINIFICANCE: [Contribution to the definition of ‘therapeutic methods’]. Removing myopia, hyperopia, and astigmatism were found to be therapeutic, i.e. wearing contact lenses.

Question 17

What is the significance of the the Cooling Animals/LELY ENTERPRISES 2010 and Perception of fatigue/MIT 1995 cases?

Answer 17

SIGINIFICANCE: [Contribution to the definition of ‘therapeutic methods’]. Alleviating feeling of being hot and/or tired were found to be non-therapeutic.

Question 18

What did we learn from Diagnostic Methods/CYGNUS?

Answer 18

SIGNIFICANCE: [Contribution to the definition of ‘diagnostic methods’]. The courts found there to be 4 steps for diagnosis:

1. Examination (collection of data)
2. Comparison (to standard)
3. Identifying deviations (symptoms)
4. Diagnosis (based on 1 to 3) [1-3 being performed on the human/animal body]

The exclusion will only apply if no. 4 is included in addition to 1-3 in the claimed invention.

Question 19

What is the significance of the Cleaning Plaque/ICI case?

Answer 19

SIGNIFICANCE: The courts found that inventions with dual effect are still excluded from patentability if one of their uses/effects falls within the scope of Art 53 (c)

STORY: Toothpaste has a dual effect in that it removes plaque (medical effect) and makes you look like a stunner, hunny (cosmetic effect)!

Question 20

What is the significance of the Appetite Suppressant/DU POINT 1986 case?

Answer 20

SIGNIFICANCE: The courts placed limitations on inventions with ‘Dual Effect’ being excluded from patentability, concluding that if the medical and cosmetic uses were substantially distinguished from one another, an application for the cosmetic use would not be excluded under ‘Dual Effect’.

Question 21

What is the significance of the embryos/WARF 2009 case?

Answer 21

SIGNIFICANCE: The courts clarified that inventions relating to products that could be prepared *exclusively* by a method that *necessarily* involved the destruction of human embryos is forbidden.

Question 22

What is the significance of the Greenpeace v Brustle 2012 case?

Answer 22

SIGNIFICANCE: Here the German courts were asked to clarify whether a stem cell obtained from a human embryo consituted a human embryo itself, within the meaning of the Biotech Directive (98/44). The Germans gave a very broad definition for a human embryo, saying it was classified as such from the point of fertilisation, as well as pre-fertilisation. Essentially, anything that could become human life is an embryo and thus couldn’t be patented and anything that couldn’t become life, isn’t and embryo and is not excluded under Art 53(a) EPC & Art 6 of the Biotech Directive.

Question 23

What happed in the International Stem Cell Corp case?

Answer 23

SIGNIFICANCE: Anything that could become human life is an embryo and thus couldn’t be patented and anything that couldn’t become life, isn’t and embryo and is not excluded under Art 53(a) EPC and Art 6 of the Biotech Directive.

STORY: Here the invention involved stimulating cells to become stem cells, which, although stem cells, were not able to go on to create human life.

Question 24

What is the significance of the Second Medical Use/EISAI 1995 case?

Answer 24

SIGNIFICANCE: Second medical use was found to be patentable for the first time.

Question 25

What did we learn from the Mobile Oil case?** Better answer required

Answer 25

SIGNIFICANCE: First and second uses found for an oil product. The first one was for reducing rust, and the second one was for lubrication. Conflicts with Merrell Dow!!

Question 26

What is the significance of the Warner-Lambert v Generics 2018 case?

Answer 26

SIGNIFICANCE: The formulation of the ‘Outwards Presentation’ test for infringement of purposive claims.

OUTWARDS PRESENTATION TEST: If you sell a product and outwardly present it for indication A specifically and someone decides to use it for indication B, you are not infringing a patent for indication B.

Question 27

What is the significance of the Estimating Sales Activity/DUNS LICENSING 2008 case?

Answer 27

SIGNIFICANCE: It changed the EPO’s approach to claims comprising technical and non-technical features. Novelty and Inventive Step can be judged for the technical features, and the non-technical ones can be ignored. The fact that there a non-technical does not automatically make something entirely non-technical.

Question 28

What is the significance of the Aerotel 2007 and HTC v Apple 2013 cases?

Answer 28

SIGNIFICANCE: The UK approach to excluded subject matter includes a 4 step process. 1. Properly construe the claim 2. Identify actual contribution 3. Check whether that contribution falls solely within the excluded subject matter 4. Check whether that contribution is technical in nature. This is not the same as the EPO’s tech/non-tech approach, where each feature is considered.

Question 29

What did we learn from Samsung V Apple 2013 EWCA?

Answer 29

SIGNIFICANCE: How to determine whether or not the same invention is disclosed in the priority application and the application claiming priority. Basically, determine whether the PSA would have *directly and unambiguously* derived the subject matter of the claim by reading the priority document.

Question 30

What did we learn from the Heatex Group [1995] RPC case?

Answer 30

With regards to the Paris Period extension, unintentional means the applicant had a continuing underlying intention to do it.

Question 31

What did we learn from Anning’s patent application [2007] EWHC?

Answer 31

With regards to the Paris Period extension, unintentional does not cover the case where an applicant does not take necessary steps to comply with a deadline despite warning from their patent attorney and the patent office.

Question 32

What is the signifiacance of Eli Lilly v Human Genome Sciences [2008] EWHC?

Answer 32

SIGNIFICANCE(4): (1) For a process-to-product claim, the applicant need only disclose one way of making the product. (2) If a competitor came up with a new way of making that product, they could get a patent for the process, but product would infringe your product. (3) Sufficiency is determined based on the whole application (description/claims/figures) (4) The PSA should be able to perform the invention without undue burden on their part. [UK PA 14(3)sufficiently complete and clear]

Question 33

What is the significance of the Schlumberger v Electromagnetic Geoservices EWCA case?

Answer 33

SIGNIFICANCE (2): [UK] (1) The invention involved encompassed more than one technology and whilst the skilled person can be a team [France Technip SA], the formation such a multidicplinary team was found to be inventive in itself, as the combination of the two technological fields to solve such a problem was not obvious at the time. (2) The courts also considered the following conundrum: if the PSA was person from tech A (or, equally so, tech B), then specification would be insuffiecient as neither person A nor person B would be able to perform the invention with their common general knowledge. They concluded that in such a case, whilst N and IS would be interpreted by PSA being A or B, the PSA for the specification would be A+B.

Question 34

What is the significance of the Biogen v Medeva [1997] RPC case?

Answer 34

SIGNIFICANCE (2): (1) In the UK, it used to be the case that sufficiency was only required at the date of publication, however during this case, the courts found that sufficiency must be required at the DOF. (2) With regards to sufficiency, we are different to the EPO in that: - at the EPO, support can’t be raised during opposition proceeding. TOO LATE T’POLOGIZE. - in the UK, lack of support is grounds for revocation.

Question 35

What is the significance of the DC Motor/LANDSING EPO [1983] case?

Answer 35

SIGNIFICANCE: (1) In this case the EPO concluded that sufficiency is required any time from the DOF to the end of the patent term, which contrasted earlier decisions. (2) The UK’s approach to when sufficiency is required is not the same as the EPO’s.

Question 36

What is the significance of Coco v Clark?

Answer 36

SIGNIFICANCE: Breach of confidence test is 1. Information is of a confidential nature. [However confidential the circumstances of communication, there can be no breach of confidence in revealing to others something which is already common general knowledge or public property] 2. Information imparted in circumstance importing an obligation of confidence. [However secret and confidential the information, there can be no binding obligation of confidence if that information is blurted out in public or is communicated in other circumstances which negate any duty of confidentiality] 3. Unauthorised use or disclosure of information relating to the invention to the detriment of the inventor. “if the circumstances are such that any *reasonable* person standing in the shoes of the recipient of the information would have realised that upon *reasonable* grounds the information was being given to him in confidence, then this should suffice to impose on them the equitable obligation of confidence” The exception to the Coco v Clark rule being when it is not in the public’s interest to keep that information confidential. There may also be contracts that say otherwise.

Question 37

Discuss the Bonzel v Intervention [1991] RPC case.

Answer 37

STORY: In Bonzel’s application, guide wire described as ‘relatively short’, was later described as ‘about as long as a catheter balloon’. This was found to be added matter. SIGNIFICANCE: During this case, the judge determined a 3-step test, the Bonzel case, wherein the courts would need to: 1. Ascertain, through the eyes of the PSA, what is disclosed. 2. Do the same for the granted patent. 3. Compare the two disclosures and decide whether any subject matter relevant to the invention has been added, by addition or deletion. The comparison is strict: matter is added if it is not clearly and unambiguously disclosed either implicitly or explicitly in the application.

Question 38

Discuss the Eli Lilly v Actavis [2017] UKSC case.

Answer 38

SIGNIFICANCE (2): (1) Prior to this case, there had been a 1-stage approach to scope. Here, the judge determined a new 2-stage test, ‘The Doctrine of Equivalents’. (2) The prosecution file may be looked at if there is ambiguity in the spec, or if it would be contrary to public policy not to do so. Judge concluded that infringement would be found upon addressing these two issues: (1) Does the variant infringe on the claims as a matter of normal interpretation? [Interpretation required] (2) If not, does the variant nonetheless infringe because it varies in a way(s) that are immaterial? [Facts/Evidence required] Yes to either (1) or (2) = infringement. The judge when further to apply the evaluation above by reformulating the Improver questions: 1. [Q of FACT] Notwithstanding the normal/standard interpretation of the relevant claims, does the variant achieve substantially the same result in substantially the same way as the invention? 2. Would it be *obvious* to the PSA reading the patent at the PD, but *knowing* the variant achieves substantially the same result, to know that it does so in substantially the same *way* as the invention? 3. Would that reader have concluded that the patentee *nonetheless* intended a strict compliance with the literal meaning of the claims was an *essential requirement* of the invention? YES, YES, NO = infringement.

Question 39

Discuss the Kirin Amgen v HMR [2004] UKHL case. [Prior to Eli Lilly]

Answer 39

SIGNIFICANCE (2): (1) Agrees with Catnic. What the addressee would have understood the words to mean > The meaning of the words the author used. (2)The judge supported the purpose of ‘The Protocol’, clarifying that the author of a contract or patent document is attempting to communicate something for a practical purpose, and what they wrote should not be construed differently from the way it was meant to be construed to its intended addressees. Thus, context is everything hunny, and a claims should be interpreted/constructed in the *purposive* rather than *literal* sense so that we are considering what the person skilled in the art would have understood the author’s words to have meant.

Question 40

Discuss the Catnic v Hill [1982] RPC ‘vertical’ case.

Answer 40

FACTS: The claimants had claimed for a vertical component, and the defendants claimed for a substantially vertical component. ISSUE: The courts were asked how to determine the extent of protection conferred by claims so that they could figure out whether or not infringement occurred. In particular, the courts were asked: (1) whether claims should be interpreted purposively or literally. (2) whether the PSA would follow the wording of the patent in strict compliance, assuming that each word/phrase is essential to the working of the invention. DECISION: The courts held that purposive interpretation was needed, and that the PSA would understand the wording to be inclusive of minor variants from the strict wording. NOTE: This is pre-Kirin Amgen and pre-Eli Lilly.

Question 41

Discuss the Improver v Remington [1990] FSR case.

Answer 41

FACTS: The courts were asked whether a ‘coiled helical spring’ was equivalent to a ‘slotted rubber tube’ for the assessment of patent infringement. SIGNIFICANCE: Formulation of the Improver Questions/Test, later reformulated by the supreme court. 1. [Q of FACT] Does the variant have a material effect upon the way the invention works? 2. Would this have been obvious at the date of *publication*? 3. Would that reader have concluded that the patentee *nonetheless* intended a strict compliance with the literal meaning of the claims was an *essential requirement* of the invention? NO, YES, NO = infringement. Note! These questions (mainly 1 and 2) were reformulated during Eli Lilly v Actavis UKSC [2017] such that the addressee is no longer required to figure out what the variant does, they are already aware of what it does for the invention at the point at which infringement is judged.