Pages 256-268

NATIONAL JUDGES' PRESENTATIONS

GB United Kingdom

David KITCHIN - Lord Justice, Court of Appeal of England and Wales, and Judge in charge of the intellectual property list - Some Recent Patent Cases in England and Wales

Introduction

There has been a considerable body of patent litigation in England over the last two years, a good deal involving familiar grounds of dispute but some involving arguments that have received little judicial consideration hitherto. I shall give an overview of them all but focus on aspects of particular interest. Once again the weight of cases has been such that I have had to confine myself to some decisions of the appeal courts.

Novelty - Article 54 EPC

I begin with Gemstar v Virgin1. The trial judge revoked a number of patents belonging to Gemstar on various grounds including lack of novelty. On appeal it was agreed that, as a case management matter, the appeal against the finding of lack of novelty would be heard first, on the basis that if it failed so too must the appeal. This procedure, designed to save costs, is being increasingly adopted.

As so often, the issue turned on the proper interpretation of the prior art. The court explained that if the prior publication gives a clear description of or clear instructions to do something that would infringe the claim if carried out after the grant of the patent, the claim will lack novelty2. The prior disclosure must be considered through the eyes of the skilled addressee as of its date. Importantly, there is no reason why such a person, as in the case of a real person, must find a meaning. In reality there are documents which have no clear meaning, documents so obscure that one throws up one's hands saying "I have no idea what the author was trying to say." The notional skilled reader can do the same, and if he does, the document is not novelty destroying. Its disclosure is not "clear and unambiguous", as required3.

Obviousness - Article 56 EPC

Appeals to the Court of Appeal in England and Wales are by way of review rather than rehearing. A finding of obviousness is a finding of fact but is recognised as one of that class of decisions, such as negligence, which require the judge to take into account all the relevant circumstances and carry out a multi-factorial assessment in arriving at his conclusion. Appeal courts are very reluctant to interfere with such decisions unless the judge has erred in principle, and not simply arrived at a decision with which another judge might have disagreed4. The experienced judges of the Patent Courts are very familiar with the relevant principles and so they rarely make such errors5, but in a number of recent cases that is exactly what has happened. They provide interesting illustrations.

Apimed v Brightwake6 concerned the use of honey in medical dressings. The invention was for a composition containing honey and enough gelling agent, such as alginate, to give the composition the consistency of a putty so it could be rolled into a pliable sheet. The prior art disclosed the use of conventional gauze dressings impregnated with honey. The trial judge held this rendered the invention obvious because it did not involve any invention to apply honey to other known pads such as those made of alginate. But in reaching that conclusion he fell into error because he failed properly to identify the inventive concept and the difference from the prior art – the inventive concept and difference lay not in the application of honey to an alginate dressing in place of a gauze dressing but rather in having the idea of using a gelling agent such as particulate alginate to increase the viscosity of the honey to such a degree it could be rolled into a sheet or formed into a putty without the need for any dressing at all.

In MMI v CellXion7 the invention was for so called IMSI catchers – devices used by the police and security services to discover the mobile phone numbers of suspected criminals and terrorists. Each phone has an IMSI, its permanent identity number. When a mobile moves from one area (known as a location area code or LAC) to another it sends a signal to the nearest or most powerful base station and can be made to give up its IMSI. It was known to use false base stations. But the trick of the patent was to cause the phone to believe that it had moved to a new LAC and therefore communicate with the false base station and deliver up its IMSI more quickly. The principal issue in the case was whether the idea of providing a different LAC to catch the IMSI was obvious given that the idea of a fake base station was known. The judge held it was not. But in reaching that conclusion he was blinded by a snowstorm of other allegations and lost sight of the fact that the patentee's own expert conceded in cross examination that the step from the key piece of prior art to the invention was obvious. In short, the judge disregarded the most important evidence, that of the independent expert8. And it was in large part the fault of the defendant, for raising too many allegations.

Added matter - Article 123(2) EPC

Two recent cases have confirmed the strict approach adopted by the courts to an objection of added matter under Art 123(2), although, interestingly, the added matter objection was rejected in both of them.

The first, Gedeon Richter v Bayer9, concerned immediate release formulations of the steroidal hormones drospirenone (DSP) and ethinylestradiol. The patent was directed to the problem that DSP is poorly soluble and that techniques for dealing with this would be likely to increase the risk of degradation. The invention was said to lie in the surprising discovery that a previously undisclosed minimum dosage of DSP was required for reliable contraceptive activity, and a preferred maximum dosage had been identified at which undesirable side effects might be avoided, and that the two components should be formulated in a tablet so as to promote rapid dissolution. It was alleged that the patent was invalid for added matter because in the parent application the only disclosure as to how to obtain rapid dissolution was by spraying or micronisation, whereas the patent taught that any known method of obtaining rapid dissolution could be used.

The second, Nokia v IPCom10, was a complex case in the long running dispute between Nokia and IPCom. In this instance two of Nokia's phones were found to infringe one of IPCom's patents for controlling access to an uplink channel in the UMTS system. Nokia argued that, with an eye on the infringement, IPCom had crafted a claim to a selection of the features of only one embodiment.

In both cases the court emphasised the test is to compare the two disclosures and decide whether any matter relevant to the invention has been added whether by deletion or addition. The test is strict in that matter will be added unless it is clearly and unambiguously disclosed in the application either expressly or implicitly11. The UK approach is therefore, in essence, the same as that explained by the Enlarged Board in G 2/10 of 30 August 2011.

Though simply stated the rule is often not straightforward to apply. For example it may be said the application discloses matter implicitly, particularly when considered in light of the common general knowledge. Where is the line to be drawn between matter which is unambiguously disclosed, albeit it implicitly, and that which is merely obvious? When is it permissible to take a feature from a particular embodiment and strip it of the other features with which it was associated - so called intermediate generalisation? To what extent is intermediate generalisation any different in principle from claim broadening? All of these questions arose in the Nokia case. So far as claim broadening was concerned, the court had regard to the three part test explained by the TBA in T 331/87 Houdaille12. This provides a convenient structure for analysing the issue but, for my part, I consider there is only one fundamental question, namely whether, following amendment, the skilled person is presented with information about the invention which is not derivable directly and unambiguously from the original disclosure.

Insufficiency - Article 83 EPC

A claim must be enabled across its breadth. And everything claimed must be useful. But how is the question of sufficiency to be determined when the claim has a functional limitation? This is the question which arose in Novartis v Johnson & Johnson13. The case concerned a patent for extended wear soft contact lenses. It was known these had to be permeable to oxygen and also wettable so as to permit movement of the lens on the eye. It was also known that silicone materials had the former characteristic and hydrogels the latter. But it was not known how to combine them. The patent purported to teach a general solution and the claims were extremely broad. Although the patent included many examples the patentees were faced with two intervening publications which drove them to argue that it had not been shown that those examples worked. Further, the evidence established that the claims contained a series of functional limitations which were so broad as to be virtually meaningless. It was therefore impossible to make lenses across the scope of the claims without engaging on a research project14. The enablement requirement could not be avoided by claiming only the lenses which worked and the claims were therefore insufficient. Interestingly, other courts came to a different conclusion15.

Industrial application - Article 52 EPC

What is necessary to satisfy the requirement imposed by Art 52 that a patent application for a gene must disclose an industrial application? Setting the bar too high may give patentees unjustified control over an unexplored field of research; setting it too low may discourage investment in bioscience. This is the question considered last year by the Supreme Court in HGS v Eli Lilly16. It is the first case in the UK fully to consider this question.

The patent disclosed a new cytokine called Neutrokine-α. The Patent Court and the Court of Appeal held the patent invalid because the skilled person would not have known of any use to which it could be put without conducting a research project. The Supreme Court reversed these rulings, preferring instead the decision of the TBA, and appears to have considered it is enough if the disclosure would be of interest to the pharmaceutical industry. Indeed, Lord Hope said at [155]:

"The industrial application that it (the TBA) had in mind was the use of the molecule for research, which it must be taken to have regarded in itself as an industrial activity".

Similarly, he continued at [157]:

"I read this as indicating that it was satisfied that the protein was a research tool which could be used to develop appropriate means and methods for the diagnosis and treatment of B-cell and T-cell lymphomas."

It is notable, however, that, even now, no such application has been found.

Further, it is striking how influenced the Supreme Court was by the decision of the TBA in this case, even to the extent, at least in the case of Lord Hope, of accepting a contrary finding of fact. He said at [161]:

"For the TBA … it was not necessary for a skilled person to undertake a research programme to conclude that the presence of Neutrokine-α in B cell and T cell lymphomas might be used to develop appropriate means and methods for their diagnosis and treatment."

This was flatly contrary to the finding at trial in England with full disclosure and cross-examination.

Perhaps more significantly, it may be asked whether the TBA has in fact developed a consistent line of authority from which clear principles can be derived. Thus Lord Neuberger identified as other general principles in the decisions of the TBA: first, the patent must disclose "a practical application" and "some profitable use" for the claimed substance, so that the ensuing monopoly "can be expected [to lead to] some … commercial benefit". Second, a "concrete benefit", namely the invention's "use … in industrial practice" must be "derivable directly from the description", coupled with common general knowledge. Third, a merely "speculative" use will not suffice, so "a vague and speculative indication of possible objectives that might or might not be achievable" will not do. Fourth, the patent and common general knowledge must enable the skilled person "to reproduce" or "exploit" the claimed invention without "undue burden", or having to carry out "a research programme". Fifth, the patent, when taken with common general knowledge, must demonstrate "a real as opposed to a purely theoretical possibility of exploitation". Sixth, merely identifying the structure of a protein, without attributing to it a "clear role", or "suggest[ing]" any "practical use" for it, or suggesting "a vague and speculative indication of possible objectives that might be achieved", is not enough."

Many of these chime with the approach adopted in the High Court and the Court of Appeal – but are inconsistent with the other principles which the Supreme Court considered determinative. More generally, the Supreme Court was plainly concerned that revocation might have a chilling effect on research. But some commentators have asked whether, in reversing the decision of the Court of Appeal, the Supreme Court gave adequate consideration to the contrary interest, namely that areas of research, indeed fundamental research, should not be foreclosed without good reason.

Infringement

Recent cases have settled the test to be applied in deciding the issue of indirect infringement under s.60(2) of the 1977 Patents Act, corresponding to Art 26 CPC. Grimme v Scott17, concerned a patent for a potato sorting machine that required rubber rollers. The defendant sold machines with steel rollers but they were designed and promoted to be replaced with rubber rollers. The court answered a series of questions concerning the interpretation of the words "supplying … means relating to an essential element of the invention for putting the invention into effect ….when the third party knows or it is obvious to a reasonable person in the circumstances that the means are suitable for putting, and are intended to put, the invention into effect."

In summary, (i) the intention referred to is that of the person supplied; (ii) the required intention is not that of the person directly supplied by the alleged infringer but the ultimate consumer; (iii) a future intention of a future buyer is enough if that is what one would expect in all the circumstances18. The knowledge and intention requirements are satisfied if, at the time of supply or offer to supply, the supplier knows, or it is obvious to a reasonable person in the circumstances, that ultimate users will intend to put the invention into effect. Here the requirement was satisfied because the defendant marketed his machines on the basis that both steel and rubber rollers could be used.

Making or repair?

When does the fitting of a replacement part amount to the making of a new patented product rather than a repair or refurbishment? In Schütz v Werit19 Floyd J began his judgment by referring to the ship of Greek legend in which Theseus and the young of Athens returned from Crete. As the old planks were replaced with stronger timbers, did the ship remain the same? The facts of the case were equally simple if rather more prosaic. Schütz was exclusive licensee under two patents for an intermediate bulk container (IBC), a large plastic bottle surrounded by a protective metal cage, the invention being particular features of the cage. Werit sent its own plastic bottles to a third party who fitted them into refurbished Schütz cages. Upon being sued for contributory infringement, it argued that the third party was not making a new patented product, but rather refurbishing the old one.

Floyd J held there was no infringement. He considered whether, when the part replaced was removed, what was left retained the whole inventive concept. If it did, then there was no making of a new article upon refurbishment. Here the invention lay in the way the cage was constructed. So putting a new bottle in the cage did not amount to making the patented article.

The Court of Appeal disagreed20. It held there was no room for an inventive concept test, and it would introduce uncertainty. There was only one test, namely whether a new article had been made. Here the claimed article had ceased to exist when the bottle and cage were separated. So combining the two together constituted making a new article. Moreover, suppose Werit had made a new cage which was fitted with an old bottle? That would infringe, yet the physical act of fitting the bottle in the cage would be the same. If it is "making" one way round, it must be "making" the other way round too.

Werit has permission to appeal to the Supreme Court. No doubt it will seek to rely on a series of decisions of the German Federal Supreme Court21, as it did before the High Court and the Court of Appeal. These provide some support for the notion that it is permissible to consider whether the technical effects of the invention are reflected in the replaced parts. It also posed this interesting question: consider a patent which describes a new type of tennis racquet frame and claims such a racquet frame when strung. Is re-stringing the racquet making another one? The test propounded by the Court of Appeal would suggest that it is, yet common sense – sometimes a dangerous consideration - would suggest it is not.

Illegality

Finally, Servier v Apotex22 concerned the availability of the defence of illegality to a claim on a cross undertaking in damages where (1) Servier had obtained an interim injunction to restrain Apotex from selling infringing products, (2) the patent was subsequently held invalid and the injunction discharged, but (3) the goods which would have been sold here, but for the injunction, would have been manufactured in Canada in breach of a patent there. Servier argued that Apotex could not recover damages for being prevented from selling a material whose manufacture would have been unlawful because it infringed a foreign patent. The trial judge agreed.

On appeal, Apotex made the concession it could not recover anything it would have had to pay in respect of the infringement in Canada but argued it was entitled to be compensated in respect of any other losses. The Court of Appeal held that in the light of this concession the appeal must be allowed. At the relevant time Apotex believed (wrongly, as it turned out) the Canadian patent was invalid; its culpability was therefore at the low end of the scale; the sales in the UK would not have been unlawful under Canadian or UK law; the Canadian court was not willing to grant an interim injunction; and the effect of the concession was to place Apotex in the position it would have been in had there been no injunction in the UK.