Court of Appeal - High Court




IPPT20140515, HCUK, Actavis v Eli Lilly
Priority date is relevant date to asses common general knowledge for the purpose of infringement. Claim construction: claim must be construed in the same manner for the purpose of considering both infringement and validity. To put it bluntly, one cannot use equivalents to extend the scope of the claim just for infringement and not for validity. Still less can one use equivalents to extend protection outside the claims for the purposes of infringement, but confine attention to the claims when considering validity. Three main classes of equivalence: (i) unfortunate drafting, (ii) technology having moved on and (iii) regrettable decision taken during prosecution. In the third class of case, there is no reason why the law should be sympathetic to the patentee. Prosecution history: courts should be cautious before relying upon prosecution history as an aid to construction, but when the prosecution history shows clearly why the claims are expressed in the manner in which they are to be found in the granted patent and not in some broader manner there is no good reason why the court should shut its eyes to the story told by the prosecution file.




IPPT20100209, Court of Appeal, London, Eli Lilly v Human Genome Sciences

Members of TNF-ligand superfamily not “capable of industrial application”: No plausible (at least in the sense of reasonably credible) use for any member of the superfamily. Authority of decisions of the Technical Boards of Appeal: We follow any principle of law clearly laid down by them, only reserving the right to differ if we are sure that the commodore is steering the fleet on to the rocks.




IPPT20091022, Court of Appeal, London, Virgin Atlantic v Premium Aircraft Interiors
Scope of protection article 69 EPC: Principles of purposive claim construction. Skilled reader is to know patent practice: and to know (i) the purpose of including reference numerals in patent claims, (ii) the purpose of dividing claims into pre-characterising and characterising portions and (iii) the practice of filing divisional applications, and to bring that knowledge to bear when he considers the scope of the claim. Added matter by deletion or addition: Strict comparison: Subject matter will be added unless it is clearly and unambiguously disclosed in the Parent.




IPPT20080410, Court of Appeal, London, Lundbeck v Generics
Novelty: disclosure of the racemate did not disclose the isolated enantiomer; no enabling anticipation. In order to anticipate a patent, the prior art must disclose the claimed invention and (together with common general knowledge) enable the ordinary skilled person to perform it.Obviousness: Not obvious to try. Sufficiency: In an ordinary product claim, the product is the invention. It is sufficiently enabled if the specification and common general knowledge enables the skilled person to make it. One method is enough. When a product claim satisfies the requirements of section 1 of the 1977 Act, the technical contribution to the art is the product and not the process by which it was made, even if that process was the only inventive step.




IPPT19880812, Court of Appeal, Londen, Improver v Remington
The "purposive construction" approach established in the Catnic case is the same approach followed by the Protocol on the Interpretation of Art. 69 EPC. If the issue was whether a feature embodied in an alleged infringement which fell outside the primary, literal or a contextual meaning of a descriptive word or phrase in the claim ("a variant") was nevertheless within its language as properly interpreted, the court should ask itself the following three questions: (1) Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no- (2) Would this (i.e. that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art. If no, the variant is outside the claim. If yes- (3) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement.