Revocation And infringement

Question 1

No-Fume v Frank Pitchford

Answer 1

Ash tray that retained smoke.
Romer J: sufficient that a workman could reach the desired result through a combination of the information in the specification and the common knowledge of the trade, using trial and error f necessary. The disclosure has therefore only to be sufficiently clear for the invention to be carried out by the skilled person over the whole area without any undue burden and without need for inventive skill

Question 2

Valensi v British Radio

Answer 2

Not a person of exceptional skill and knowledge, not to be expected to exercise any invention, nor any prolonged research, inquiry or experiment. However, must be prepared to display a reasonable degree of skill and common knowledge in making and to correct obvious errors in the specification if a means of correcting them can readily be found

Question 3

Mentor corp v Hollister

Answer 3

Valensi remains good law- in line with EPC rules and under the current law the applicant doesn’t have to put in his specification the best possible method of carrying out the invention

Question 4

Kirin-Amgen

Answer 4

HOL made it clear that there is a second form of classical insufficiency that is based on ambiguity which goes beyond a mere lack of clarity and makes it impossible for the skilled person to perform the invention as he cannot determine what falls inside the claim or not.
Lord Hoffman: must use acid, doesn’t specify which, only some acids will work and to determine which will require extensive testing, this is not merely lack of clarity, it is insufficiency

Question 5

Biogen v Medva

Answer 5

Specification must enable the invention to be performed to the full extent of the monopoly claimed( biogen/ excessive claim breadth insufficiency)

Question 6

Generics v Lunbeck

Answer 6

Arnold J summarised HOL’s judgement

• agree with Lord Hoffman in Biogen
• this case was distinguished as it concerned a claim for a single chemical compound
• it’s a mistake to equate the technical contribution of a claim with its inventiveness
• it must therefore be possible to make a reasonable prediction the invention will work with substantially everything falling within the scope of the claim

Question 7

Unilin Beheer BV v Berry Floor NV

Answer 7

English court held a patent to be valid and infringed: at the same time the opposition proceedings were still pending in the EPO-
English court could not award a stay in damages proceedings until the opposition proceedings were completed because the matter was res judicata

Question 8

Menashe Business Mercantile v William Hill Organisation

Answer 8

COA held a patent for a gaming system was infringed through use of a computer program supplied by D on a CD ROM which turned the host computer into a terminal on the gaming network despite the computer being outside the UK- the input and output of the host computer was essential but the supply of the CD-ROM and its access in the U.K amounted to use in the UK

Question 9

Smith Kline v Harbottle

Answer 9

1st Ds sought to export the drug Cimetidine from Italy to Nigeria, consignment routed through London, held in a British Airways warehouse- BA held as joint keepers. Held: Oliver J found in favour of the airline- art 29 CPA clearly some positive action was envisaged

Question 10

Solar Thomson Engineering v Barton

Answer 10

COA held it was in order to carry out repairs to an item without infringing any relevant patents, as long as the work or repair could breve said to be the manufacture of a new item

Question 11

United Wire v Screen Repair

Answer 11

HOL Held the notions of repair and making are mutually exclusive for the purpose of the 1977 act- repair can therefore not amount to infringement because s60 requires the making of the patented item

Question 12

Monsanto v Stauffer Chemical

Answer 12

Patent for a herbicide- D’s carried out trials of their alleged infringing product with the view of obtaining official product safety clearances- held by COA that experiments permitted by the act were for scientific purposes, this was clearly not the case here and so no exemption

Question 13

Van der lely

Answer 13

Study the ‘pith and narrow’ of the invention to see what the inventive step was-
Essential integers

Question 14

Rodi & Weinberger v Showell

Answer 14

Expandable watch straps- HOL found infringement adopting the essential integers approach

Question 15

Catnic

Answer 15

Steel lintel with left side vertical- D make rear side 6* off vertical
Purposive approach should take precedent- whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used l, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be the essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the product worked

Question 16

Codex corp v racial-Milgo

Answer 16

High speed data transmission through a model- infringing type was much faster and more complex- court adopted the Catnic approach although noted it wasn’t such a radical change as was said-
Pointed out 3 key features of the patent which (although subtly different) were found in the infringing product

Question 17

AC Edwards v Acne

Answer 17

Similar digital price display panels found outside petrol stations- P used springs to hold the ties together while D used flexible piece of plastic- held the use of the word ‘spring’ was of no significance

Question 18

Harrison v Project &a design

Answer 18

Private individual devises a chair lift for his wife, patented, after dealing with P, D company created chair lifts.
P used a weight to balance the progress of the chair whereas D used a chain- COA held no infringement, a different method of achieving the same purpose and P specified the use of a weight

Question 19

Improved corp v Remington

Answer 19

Epilators
1- material effect
2- obvious to a reader skilled in the art
3- would the reader skilled in the art 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 intention

Question 20

Wheatley v Drillsafe

Answer 20

Confirms Catnic/improver however the protocol questions are no more than guides

Question 21

American home products v Novartis

Answer 21

Raptamycin to inhibit organ or tissue transplant rejection- derivative known as SDZRAD- rapamycin was clearly used to indicate the single molecule

Question 22

Kirin-Amgen

Answer 22

No suggestion that the term ‘an exogenous DNA sequence coding for erythropoietin’ could have a loose meaning to include an endogenous #

Whether a person skilled in the art would have understood the invention to operate at such a level of generality that it was irrelevant whether the DNA that coded for erythropoien was exogenous or not

Question 23

Virgin Atlantic airways

Answer 23

1-12 examples of improver

Question 24

Grimme v Scott

Answer 24

Potato separator machine- contributory infringement: court considered s60(2) in detail- the tort is actionable at the moment of supply irrespective of what may subsequently happen.
Whose intention is referred to: it is enough the supplier knew at the time of offer or supply that some ultimate consumer would intend to use, adopt or alter the means essential so as to infringe