Patent Caselaw Refined! Flashcards
What’s the significance of the Merrel Dow ‘Compound A, Compound B’ case?
KEY CONCEPTS:
STORY:
ISSUES:
RULES:
DECISION:
IMPACT:
What is the significance of Coco v Clark?
KEY CONCEPTS: Breach of Confidence, Public Interest
ISSUE:
- How do we assess whether or not information is confidential?
DECISION: Breach of confidence criteria:
- 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]
- 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]
- 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.
Discuss the Bonzel v Intervention [1991] RPC case.
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.
ISSUE:
- How do we assess whether or not there is added matter?
DECISION: During this case, the judge determined a 3-step test, the Bonzel case, wherein the courts would need to:
- Ascertain, through the eyes of the PSA, what is disclosed.
- Do the same for the granted patent.
- 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.
Discuss the Eli Lilly v Actavis [2017] UKSC case.
KEY CONCEPTS: Scope of protection, Infringement, Doctrine of Equivalents, Prosecution History
STORY: The claimants patented a drug for cancerous tumours, premextred disodium, and the defendants sought declarations of non-infringement for their version, which contain premextred dipotassium.
The court of 1st instance found no infringement, the CoA found indirect infringement, and it went to the UKSC.
ISSUE:
- How do we assess infringment?
- Can we use the prosecution history to construe claims?
- [RULE: UKPA 125 and Art 69 EPC state that an invention is specified in the the claims of the specification in a patent or application for a patent, and the scope of the claims is determined based on the description and drawings included in the specification, and that the extent of protection conferred should be determined accordingly.]*
- [RULE: The Protocol on the interpretation of Art 69 EPC says that the claims should not be considered ‘mere guidelines’ nor should they be considered in a strict, literal sense. The interpretation of the claims must sit between these two extremes]*
DECISION:
- Judge concluded that infringement would be found upon addressing these two issues:
- Does the variant infringe on the claims as a matter of normal interpretation? [Interpretation required]
- 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, ciriticising the original questions for conflating the 2 questions:
- [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?
- 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?
- 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. Infrirngement was found here, and a DoE was established.
- The prosecution file may be looked at if there is ambiguity in the specification; it would be contrary to public policy not to do so.
IMPACT:
- This has changed the way we understand claim construction and infringement and is patentee friendly.
- It takes into account advances in technology and also the intent/understanding of the infringer.
Discuss the Kirin Amgen v HMR [2004] UKHL case. [Prior to Eli Lilly]
KEY CONCEPTS: Scope of Protection, Infringement
STORY: The 2 parties produced a particular hormone using similar technologies. The claimant sued for infringment.
ISSUE:
- How should the claimant’s claims be construed?
* [RULE: UKPA 125 and Art 69 EPC state that an invention is specified in the the claims of the specification in a patent or application for a patent, and the scope of the claims is determined based on the description and drawings included in the specification, and that the extent of protection conferred should be determined accordingly.]*
* [RULE: The Protocol on the interpretation of Art 69 EPC says that the claims should not be considered ‘mere guidelines’ nor should they be considered in a strict, literal sense. The interpretation of the claims must sit between these two extremes]*
DECISION:
- The courts applied Catnic v Hill & Smith’s purposive construction and clarified that we care about what the addressee, the PSA, would have understood the author to mean, not what the author would have meant. This put a huge emphasis on construing claims based on the context, hunny, the context.
- This accounts for technological advances!
IMPACT:
- This was later discarded in Eli Lilly v Actavis UKSC in 2017, where a Doctrine of Equivalents was established in the UK.
Discuss the Catnic v Hill [1982] RPC ‘vertical’ case.
KEY CONCEPTS: Claim Construction, Pre-Eli Lilly, Pre-Kirin Amgen
STORY: The claimants had claimed for a vertical component, and the defendants claimed for a substantially vertical component.
ISSUE:
- Whether claims should be interpreted purposively or literally.
- 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.
- PSA would understand the wording to be inclusive of minor variants from the strict wording.
- Vertical = Vertical enough to work
IMPACT: This is pre-Kirin Amgen and pre-Eli Lilly.
Discuss the Improver v Remington [1990] FSR case.
KEY CONCEPTS: Infringement, Scope of Protection, Improver Questions
FACTS: The courts were asked whether a ‘coiled helical spring’ was equivalent to a ‘slotted rubber tube’ for the assessment of patent infringement.
ISSUE:
- How do we assess infringement for non-identical elements with a similar funtion?
* [RULE: Which rules applied in 1990? Before EPC 2000]*
DECISION: Formulation of the Improver Questions/Test, later reformulated by the supreme court.
- [Q of FACT] Does the variant have a material effect upon the way the invention works?
- Would this have been obvious at the date of publication?
- 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.
IMPACT:
- These questions (mainly 1 and 2) were criticised and reformulated during Eli Lilly v Actavis UKSC [2017] such that the addressee is aware of the variant’s contribution to the invention at the point at which infringement is judged.
Discuss Virgin Atlantic v Premier Aircraft [2009] EWCA
KEY CONCEPTS: Deliberate limations, Claim Construction, Pre-Eli Lilly
STORY: The CoA clarified, in 11 points, the state of the understanding and applicaiton of claim construction in infringement cases. After reiterating the purpose and key points of EPC Art 69, The Protocol on the interpretation of Art 69, and UKPA 125, Catnic v Hill & Smith [1982], and Kirin Amgen [2004], they added
- If a patentee has included a deliberate limiation in their claims, it must have a meaning and should not be disregarded.
- If a patentee has used a word/phrase which acontextually has a particular meaning, it does not necessarily have that meaning in context.
- There is no DoE
- [RULE: UKPA 125 and Art 69 EPC state that an invention is specified in the the claims of the specification in a patent or application for a patent, and the scope of the claims is determined based on the description and drawings included in the specification, and that the extent of protection conferred should be determined accordingly.]*
- [RULE: The Protocol on the interpretation of Art 69 EPC says that the claims should not be considered ‘mere guidelines’ nor should they be considered in a strict, literal sense. The interpretation of the claims must sit between these two extremes]*
IMPACT:
- No DoE has been cancelled by Eli Lilly v Actacvis 2017.
What is the significance of Adaptive Spectrum v BT [2014]?
KEY CONCEPTS: Claim Construction
SIGNIFICANCE:
It is not appropriate to read limitations into the claim solely on the ground that examples in the body of the specification have this or that feature. The reason is that the patentee may have deliberately chosen to claim more broadly than the specific examples, as they are fully entitled to do.
What is the significance of Société Technique de Pulverisation Step v Emson Europe Ltd [1993] RPC?
KEY CONCEPTS: Claim Construction
SIGNIFICANCE:
- All integers must be considered during claim construction
- Integers can’t be removed to make the claim easier to construe.
What is the significance of Astellas Pharma v Comptroller-General [2009] EWHC?
KEY CONCEPTS: Claim Construction
SIGNIFICANCE:
- Comprising/Consisting
What is the significance of the Helitune v Stewart Hughes case?
KEY CONCEPTS: Prior Use
SIGNIFICANCE:
-
Producing protoypes but not selling before the PD does not constitute serious and effective preparations to qualify the ‘prior use’ defence.
*
What is the significance of Forticrete Ltd v Lafarge Roofing Ltd [2005] EWHC?
KEY CONCEPTS: Prior Use
SIGNIFICANCE:
- Full scale trials and preparation for full-scale commercial production = serious and effective preparation.
Discuss Meter-Tech Llc & Anor v British Gas Trading Ltd [2016] EWHC
KEY CONCEPTS: Infringement defence, Experimental Use
STORY: The claimants patented a pre-pay utility meter system and brought infringement proceedings for the defendant’s current use of a similar product.
The defendants attempted to revoke the clamant’s patent on grounds of invalidity.
ISSUE:
- How do we determine that experimental use has occurred?
* [RULE: UKPA 60(5) permits the following acts:*
- Experimental Use
- Extemperaneous Preparation
- Private and Non-Commercial Use
- Crafts (air/ship) temporarily or accidentally entering or crossing UK territories
- Farmers use of Plant Propagating material (when the plant propagation material has been sold)
- Animals or Animal Repropductive Material (when breeding stock or reproductive material has been sold)]
DECISION: The courts determined that lower courts would need to assess the following on a case-by-case basis
- Are the acts trials and can they be described as scientific research and/or development?
- Were the trials carried out to find out something unknown or to test whether a product was commerically acceptable?
- Were the trials carried out to test performance in different conditions or on a different scale?
- Were the trials carried our to demonstrate or collect info to demonstrate that something works? BAD
- Was the purpose to directly or indirectly generate revenue as a result of the use of the invention itself? BAD
Infringement was found, but the experimental use defence failed.
What is the significance of Smith and Nephew v Conva Tech EWCA [2015]?
Key Concepts:
Significance:
- The meaning and scope of a numerical range in a patent claim must be ascertained based on the CGK and context provided by the spec.
- In light of the CGK and the teaching of the specification, the skilled person may understand that the patentee has chosen to express the numerals in the claim to a particular but limited degree of precision and so intends the claim to include all values which fall within the claimed range when stated with the same degree of precision. This depends on the degree of precision.
