Patent Cases Flashcards
Synthon v SmithKline Beecham [2005] UKHL 59
- Background:
- Synthon appealed against decision that Beecham’s patent for Paroxetine salt was valid in view of Synthon’s earlier application (which was state of the art under PA 1977 s3(2) so only relevant for novelty)
- Question at stake was whether Synthon’s earlier application was an enabling disclosure for purposes of novelty
- Legal principles:
- Emphasises that disclosure and enablement were distinct concepts, each of which had to be satisfied separately and had different rules.
- Disclosure - prior art had to disclose invention that, if performed, would infringe patent in suit (reverse infringement test for novelty)
- for purposes of disclosure not enough to say skilled person would come up with invention that infringed patent without undue burden
- Enablement - once disclosed, person would undertake reasonable experimentation to make it work
- Decision:
- Particular Paroxetine salt was disclosed in earlier application (despite the method listed not actually resulting in the correct salt)
- Enabled as skilled person would have corrected mistake with common general knowledge in reasonable time
Pozzoli v BDMO [2007] EWCA Civ 588
- Restated inventive step test
- a) identify notional person skilled in art b) identify relevant common general knowledge of that person
- Identify inventive concept of claim, or if that cannot readily be done, construe it
- Identify, what, if any differences exist between matter cited as forming part of the state of the art and the inventive concept of claim or claim as construed
- Viewed without any knowledge of alleged invention as claimed, do these differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
- Decision:
*
Technip France SA’s Patent [2004] EWCA Civ 381
- Man skilled in the art can be a team which is:
- an assembly of nerds of different basic skills, all unimaginative
- Skilled man whether team or person is “not a complete android” - shares common prejudices or conservatism common in art concerned
Merrell Dow Pharmaceuticals v Penn Pharmaceuticals [1996] RPC 76
- Background:
- Merrel Dow’s patent on anti-histamine had expired
- Merrel Dow had later still patent on acid metabolite of anti-histamine which was produced by liver
- Merrel Dow claimed supply of anti-histamine was infringement of later patent as it was a means for putting the invention into effect (by way of liver metablising drug)
- Legal points:
- Under s2(2), state of art is not confined only to products where chemical composition is known
- It is invention itself which must be new
- Invention part of state of art if disclosed information sufficient to enable public to work it
- Decision:
- Disclosure in earlier specification of “a part of the chemical reaction in the human body produced by the ingestion of terfenadine and having an anti-histamine effect” was sufficient to make product part of state of the art for the purposes of synthesising in body (but not for synthesising/isolating compound)
Lux Traffic v Pike Signals [1993] RPC 107
- Background:
- Invention for traffic light control systems was trialled and made available to contractors over period of five months
- Legal points:
- There is no need to prove anybody saw the disclosure provided the relevant disclosure was in public
- Anticipating description in a book will invalidate a patent if book is on a shelf of a library open to the public, whether or not anybody read the book
- Decision:
- These contractors were free in law and equity to observe it and if a skilled man had taken the time to test the invention he would have figured out how it works so disclosed (even though the contractors hadn’t actually done so)
Generics v Lundbeck [2009] UKHL 12
- Patent claim for product (rather than method) is not liable to revocation on grounds of insufficiency even if only inventive step is the method by which the product was made and only one inventive method is described
- Inventive concept is connected to but not the same as the technical contribution:
- Inventive concept - core (or essence) of the invention
- Technical contribution evaluates its inventive concept by assessing how far forward it has carried state of the art
- Facts:
- Lundbeck had discovered one way of making escitalopram (separating enantiomers) and had product patent
- Generics attempted to revoke product patent on basis only one way was described so their patent lacked sufficiency for product where only inventive step was in method of creating product and other superior methods for making product had become available
- As a general rule (despite above) “technical contribution” should be used to assess monopoly granted to patent - Appeal dismissed as “technical contribution” was to make available the product which was the isolated enantiomer for the first time
G 2/98 - Requirement for claiming priority of the ‘same invention’ [2001] OJ EPO 413
- EPO requirement for claiming priority of “the same invention” (Art. 87(1) EPC) means priority is to be acknowledged only if skilled person can derive subject-matter of the claim directly and unambiguously (i.e. same requirements as for added subject-matter)
Biogen v Medeva [1997] RPC 1, 53
- Application must be sufficient at date of filing (not date of publication)
- Biogen insufficiency - invention cannot be performed across the whole range of claim without undue burden
- Facts:
- B’s disclosure for method of producing antigens of hep B. virus - Insufficient as patent purported to cover methods of producing antigens that did not rely on the same principles to produce the antigens
Eli Lilly & Co v Human Genome Sciences Inc [2008] EWHC 1903 (Pat)
- Key elements of requirements to determine sufficiency:
- identify invention by reading and construing the claims
- in case of product claim, that means making or otherwise obtaining the product
- in case of process claim, it means working the process
- sufficiency assessed on basis of the description as a whole including the description and the claims
- specification must be sufficient to allow invention to be performed over whole scope of claim
- specificaton must be sufficient to allow invention to be performed without undue burden (reasonable trial & error ok)
Eli Lilly v Actavis UK [2017] UKSC 48
Reformulated Improver Questions
- Eli Lilly restated Improver questions:
- Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, 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? - Question of fact
- Would it be obvious to the person skilled in the art, 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? - Question should still apply to variants which rely on, or are based on, developments since the priority date.
- 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? (when one is considering variant which would have been obvious at the date of infringement rather than at the priority date, necessary to imbue notional addressee with more info than they might have had at priority date)
- For establishing infringement where no literal infringement: answers to first two questions must be yes and answer to thrid should be no.
Improver v Remington [1990] FSR 181
- Improver questions for determining scope of claim:
- does variant have material effect on the way in which the invention works? If yes, the variant is outside claim. If no -
- Would this (i.e. that the variant has no material effect) have been obvious to a reader skilled in the art at the date of publication of the patent? If no, variant outside the claim. If yes -
- Would a reader skilled in the art nevertheless have understood from language of the claim that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim.
Kirin-Amgen v HMR [2005] RPC 9
- Improver questions and Article 69 EPC just guidelines for applying purposive interpretation to equivalents which are more useful in some cases than others
- Improver questions fell out of favour and replaced with purposive interpretation of: what would the person skilled in the art have understood the patentee to mean?
- It had been assumed prior to Kirin-Amgen that Article 2 of the Protocol of Interpretation of Article 69 in EPC 2000 had affirmed a doctrine of equivalents but
- Kirin-Amgen asserted that provision only said equivalents should be considered and protection should not be extended beyond that covered by the claims (as interpreted by the person skilled in the art)
- “doctrine of equivalents” essentially assumed under purposive interpretation by person skilled in the art and provided no further protection beyond this
Eli Lilly v Actavis [2017] UKSC 4
Overall Infringement Questions
Two questions to determine infringement:
- does the variant infringe any of the claims as a matter of interpretation; and, if not
- does the variant nonetheless infringe because it varies from the invention in immaterial way(s)? If yes to either, infringement otherwise no. (doctrine of equivalents)
- issue 1 is a question of interpretation
- issue 2 must be answered with reference to the facts and expert evidence
Eli Lilly v Actavis [2017] UKSC 48
Relevance of prosecution history
- Reference to prosecution file is only appropriate where:
- point of issue is truly unclear if one confines oneself to specification and claims of the patent, and contents of file unambiguous resolves the point; or
- it would be contrary to public interest to ignore contents of the file
Catnic v Hill & Smith [1982] RPC 183
- Claims should be construed ‘purposively’ i.e. they should not be limited to their strict or literal meaning and should be interpreted from the perspective of a person skilled in the art
Virgin Atlantic Airways v Premier Aircraft [2009] EWCA Civ 1062
(Pre-Eli Lilly summary of infringement principles)
(i) The first overarching principle is that contained in Article 69 of the
European Patent Convention;
(ii) Article 69 says that the extent of protection is determined by the
claims. It goes on to say that the description and drawings shall be
used to interpret the claims. In short the claims are to be construed in
context.
(iii) It follows that the claims are to be construed purposively—the
inventor’s purpose being ascertained from the description and
drawings.
(iv) It further follows that the claims must not be construed as if they
stood alone—the drawings and description only being used to resolve
any ambiguity. Purpose is vital to the construction of claims.
(v) When ascertaining the inventor’s purpose, it must be remembered that he may have several purposes depending on the level of generality of his invention. Typically, for instance, an inventor may have one, generally more than one, specific embodiment as well as a generalised concept. But there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used: purpose and meaning are different.
(vi) Thus purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used. Hence the other extreme of the Protocol—a mere guideline—is also ruled out by Article 69 itself. It is the terms of the claims which delineate the patentee’s territory.
(vii) It follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements.
(viii) It also follows that where a patentee has used a word or phrase which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context.
[(ix) It further follows that there is no general “doctrine of equivalents” - superseded by Eli Lilly
(x) On the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context - superseded by Eli Lilly]
(xi) Finally purposive construction leads one to eschew the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge.
KCI Licensing v Smith & Nephew [2010] EWHC 1487 (Pat), Arnold J
- Interprets s.7(2) of the Patents Act 1977 as meaning that the patentable invention was property (i.e. the invention itself rather than just the application/patent, this property exists even before patent applied for) and that the inventor was first owner unless conditions in s.7(2)(b) applied.
- This property could be used to found claims to entitlement.
Oxford Nanopore Technologies Ltd v Pacific Biosciences of California Inc {EWHC]
- A licence is an “exclusive licence” within the meaning of the Patents Act 1977 s.130(1) where a third party had an option to take a licence under a patent but had not done so.
Allen & Hanburys Ltd v Generics (UK) Ltd [1986] RPC 203 (UKHL)
- Licenses of right:
- If license agreed voluntarily then no restriction on what licensor and putative licensee may agree
- In default, terms agreed by comptroller, these must:
- the patent proprietor to receive reasonable renumeration
- be the terms that would be agreed between a willing licensor and willing licensee
- otherwise, comptroller not subject to greater fetters than parties themselves would have been (unless they’re contrary to well-established principles of law or public policy
Patchett’s Patent [1967] RPC 237 (EWCA)
- Basic compensation for Crown use is willing licensor, willing licensee approach
Unilever plc v Procter & Gamble Co [2000] FSR 344 (Court of Appeal)
A communication made during without prejudice communications is usually protected from being a threat
Berry Trade Ltd v Moussavi [2003] EWCA Civ 715
- Without prejudice cannot be used as a cloak to make a threat
IDA v University of Southampton [2006] EWCA Civ 145
- Who should hear entitlement proceedings
- Where there are proceedings before the court (e.g. breach of confidence) then entitlement proceedings should be heard before the court. The Comptroller’s jurisdiction should be reserved for relatively straightforward cases
- Who should be entitled:
- Mere non-enabling idea is not enough to give patent for it solely to the devisor
- Those contributing enough information by way of necessary enablement to make the idea patententable would count as “actual devisors” (as turned “airy-fairy” into practical)
- Those who contribute only unnecessary detail cannot be counted as actual devisors
Luxim v Ceravision [2007] RPC 33 (High Court)
- Factors for deciding whether court or comptroller should hear entitlement proceedings:
- Different costs regime applied before hearing officer - in court full adverse costs can be granted against losing party but far lower adverse costs payable in IPO
- Technical issues - hearing officer well equipped
- Non-technical factual issues - if sufficiently complex then judge better (e.g. fraud, breach of fiduciary duty)
- Patent Law issues - hearing officer well equipped
- Non-patent law issues - indicates judge likely to be more appropriate
- Not a simple judgment as to whether a matter was “highly complex”
- Relevant factors must all be balanced
- Falls to comptroller to decide
Yeda v Rhone-Poulenc [2007] UKHL 43
- There was no general principle or doctrine that a person claiming to be entitled to a patent that had been granted to somebody else could not succeed merely by proving that he, and not the owner of the patent, was the inventor, but had to invoke some other rule of law to establish his entitlement.
- Amending nature of claim to entitlement (e.g. from joint to sole ownership) is not a new claim (and so provided original claim was made within two years of grant, claim is still valid if amended)
- First to file rule is about validity not entitlement so three cases possible where A claims his inventive concept has been patented by B:
- B arrived independently at the same invention so B entitled
- A communicated information to B without duty of confidence, B’s patent is invalid for lack of novelty
- A communication information to B in confidence, patent will be valid and A can claim entitled because A is the inventor and not because B made application in breach of duty of confidence, confidence is relevant to validity and not to entitlement
Goddin & Rennie’s App [1996] RPC 141
Remedy should be granted which: “provides a reasonable opportunity for the patent to be exploited should there be a demand for it”
Staeng’s Patent [1996] RPC 183
- Job description of employee will usually indicate whether they were employed to invent
Harris’s App [1985] RPC 19, 29
- Employed to invent? - Look at activities usually undertaken by employee
- would ‘an invention’ result?” - not any invention resulting nor the particular invention resulting, instead something between the two
- “special obligation” - depends on status of employee and attendant duties and responsibilities (Managing Director and Sales Manager have very different roles, being called a ‘manager’ not enough for this obligation to arise)
LIFFE v Pavel Pinkava [2007] RPC 30
- Should not just look at duties when a person is first employed but take into account what they have become as duties change over time (for purposes of ownership)
- PA1977 s42(2) means contracts trying to diminish employees rights are not enforceable
Shanks v Unilever Plc [2017] EWCA Civ 2
- “outstanding benefit” - consider whether the benefit to the employer exceeded what would normally be expected to result from the work for which the employee was paid so long as one bears in mind that the focus of s.40(1) is on the benefit to the employer not inventiveness of employee
- “employer” refers to real employer not notional employer
- “benefit” means actual benefit not potentially realisable benefit
- turnover and profit of employer relevant but not decisive
- Being appealed to supreme court
Kelly v GE Healthcare [2009] EWHC 181 (Pat)
- S40 available to “actual deviser”
- At time, ‘patent’ had to be cause of benefit (but now expanded to invention in act)
- Compensation under s41 determined in light of all available evidence
- Employee’s share of value might in principle lie anywhere between 0 and 33%
- Taking into account relevant factors, it was towards lower end in this case - 3%
- “Ex-post” analysis should be applied to determine benefit not ex-ante: i.e. real not hypothetical profit
American Cyanamid Co v Ethicon Ltd [1975] AC 396
Test for determining whether interim injunction should be granted:
- assess whether there is a serious question to be tried
- assess whether damages would be adequate remedy for party injured by grant of, or refusal to grant, interim injunction
- where the balance of convenience lies (if everything else equal, normally prudent to preserve status quo)
Only consider relative strength of each party’s case if extent of uncompensatable damage is similar and strength of one’s party case is disproportionate to that of the other party.
- Significance: Court should not try to resolve conflicts of evidence for interim injunction, these should be dealt with at trial.
