Patent Cases

Question 1

NRDC v Commissioner 1959 HCA

Answer 1

Use of a known substance in a new way (as a herbicide); a manner of manufacture is an “artificial state of affairs” for “economic benefit”

Question 2

Bernhard Joos v Commissioner of Patents 1972 HCA

Answer 2

A method of cosmetically improving a human is patentable - in this case, a hair strengthening product.

Question 3

Catnic Components v Hill & Smith 1982 - lord diplock

Answer 3

5% angle is still ‘vertical’; a patent should be construed purposively

Question 4

Garford 2015 - FCAFC

Answer 4

laim for mining rock bolt apparatus anticipated. The term ‘a means for’ is broad and means only ‘a means suitable for’ and does not mean ‘intended for’ or specifically ‘adapted for’ or ‘configured for’ the function. Something just capable of the function (whether intended to or not) in the prior art can anticipate such a claim.

A claim will be fairly based if it is narrower than the widest description.

Question 5

AstraZeneca v Apotex 2014 - FCAFC

Answer 5

The ‘starting point’ for assessing obviousness is by reference to prior art and ‘common general knowledge’ of a skilled addressee. The specification’s description and any problem the invention tries to solve aren’t relevant unless they are in the prior art or common knowledge.

Question 6

Novozymes v Danisco 2013 -FCAFC

Answer 6

Following directions in earlier prior art would result in an baking enzyme catalysing the patented reaction (albeit unknowingly). If directions in the prior art can be shown to lead inevitably to the carrying out of the alleged invention, there will be grounds to invalidate the patent, even where there is no express disclosure on the face of the document.

Question 7

Ranbaxy v AstraZeneca 2013 - FCA (Middleton)

Answer 7

Selection of a salt does involve an inventive step

Question 8

Damorgold v JAI Products 2015 - FCAFC

Answer 8

Prior use will only anticipate if people can see everything about it (ie. it may need to be in a disassembled state). Curtain blind in a show room was not dismantled by customers.

Question 9

Otsuka v Generic Health 2015 -FCAFC

Answer 9

ARIPIPRAZOL - Disclosure of aripiprazol to treat schitzophrenia encompasses disclosure of the treatment of the symptoms of the same

Question 10

Firebelt v Brambles 2000 - FCAFC

Answer 10

Garbage trucks functioning in particular conditions. There is no requirement to give a best method for things that are ancillary to the “claimed invention”

Question 11

Exponent v Buononet 2011 - FCA (Bennett)

Answer 11

Foaming agent (no specific one was discloised after some experimentation with different types) - if the inventor is not sure then a generalised disclosure may be the best method

Question 12

Flexible Steel Lacing 2004 - FCA (Healy)

Answer 12

If a person arrives at a feature without selection it is not required to be disclosed for best method

Question 13

Malcolmson v Plimpton 1876 - UK

Answer 13

Knowledge of a better angled rollerskate by the original American inventor did not invalidate the patent for lack of best method; knowledge of the inventor does not necessarily equate with knowledge of the patentee

Question 14

Kimberly-Clark v Arico Trading - HCA

Answer 14

The legal test for sufficiency pre Raising the Bar is “will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions of prolonged study of matters presenting initial difficulty?”

Question 15

Hoffman LaRoche 1971 - HCA (Gipps only)

Answer 15

A description of a class of compounds is fair basis support for all of the compounds in the class

Question 16

Lockwood v Doric No 1

Answer 16

Fair basis authority: claims are fairly based on mere consistory clauses as long as there’s nothing inconsistent with them

Question 17

Sanofi v Apotex 2013 - HCA

Answer 17

LEFTHLUNAMIDE - Incidental treatment of a related disease (psoriasis where the indication was arthritis) is not contributory infringements a patent claiming a method of treating that disease (psoriasis)

Question 18

North Eastern Marine Engineering v Leeds Forge 1906 - Court of Appeal

Answer 18

A patent may be revoked notwithstanding that it has expired.

Question 19

Sanofi v Parke Davis 1983 - HCA

Answer 19

The term ‘patentee’ extends to include a reference to the proprietor of an expired patent (under 1952 Act)

Question 20

Asahi Kasei v General Clutch - 1991 - FCAFC

Answer 20

“Comprising” can be intended to mean ‘exclusively containing’ and be a ‘closed-ended interpretation’ in particular contexts (as this is the ordinary meaning of the term).

Question 21

Fresenius Medical Care v Gambro 2005 - FCAFC

Answer 21

The principle of “ pith and marrow “ applies only to immaterial variations where an inessential integer is omitted or substituted. The terms of a claim, purposively construed, exhaustively define the scope of a claim; there is no room for a doctrine of equivalents

Question 22

Asahi Kasei v General Clutch - 1991 - FCAFC

Answer 22

“Comprising” can be intended to mean ‘exclusively containing’ and be a ‘closed-ended interpretation’ in particular contexts (as this is the ordinary meaning of the term).

Question 23

Smith v Wake Forest Uni FCAFC - 2009

Answer 23

A mere collocation of parts is not a ‘manner of manufacture’. A claim is to a mere collation if the combined elements do not interact with each other to produce a new result or product; the interaction is the essential element.

Question 24

Myriad 2015 - HCA

Answer 24

Where a new class of claim (as assessed according to its ‘substance’) involves a significant new application or extension of the concept of ‘manner of manufacture’, factors beyond those derived from the NRDC decision are relevant to determining whether a concept should be extended by judicial decision to include that class of claim.

Question 25

Reckitt Benckiser v GSK 2016 - FCA

Answer 25

CHILDREN’S PANADOL - An omnibus claim will be narrowly construed and limited in scope to the essential features of the invention as defined in the specification

Question 26

Kafaratis v Davis 2016, FCAFC

Answer 26

Expanding an inventive concept to broader implications will not give an entitlement to inventorship even if it expands the claims. Baccarat game concept expanded to different games

Question 27

Lundbeck

Answer 27

A dosage range may lack utility where a lowest or highest dose is not useful