UK Supreme Court - House of Lords

IPPT20170712, UKSC, Actavis v Eli Lilly

Patent law. Scope of protection. The reformulated (guideline) questions  for finding infringement are as follows: i) 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, ie the inventive concept revealed by the patent? ii) 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? iii) 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? In order to establish infringement in a case where there is no literal infringement, a patentee would have to establish that the answer to the first two questions was “yes” and that the answer to the third question was “no”. Appropriate use of prosecution history: Reference to the file would only be appropriate where (i) the point at issue is truly unclear if one confines oneself to the specification and claims of the patent, and the contents of the file unambiguously resolve the point, or (ii) it would be contrary to the public interest for the contents of the file to be ignored. Indirect infringement: I would uphold the Court of Appeal’s determination that Actavis are liable to Lilly for indirect infringement in the United Kingdom with respect to their products if Actavis know, or it is obvious in the circumstances, that ultimate users will dilute in saline - or at least Actavis would be liable for indirect infringement if they were not liable for direct infringement. The Court of Appeal said that this conclusion would apply equally to France, Italy, and Spain, and there is no challenge to that from Actavis.

IPPT20111102, UKSC, Human Genome Sciences v Eli Lilly

Sufficient disclosure to satisfy requirements of article 57 EPC regarding “a practical application” and “some profitable use”. Supremacy principles laid down by the Board’s jurisprudence. No different assessment of evidence if one concludes that the disclosure satisfies article 57 in line with Board’s jurisprudence. Sufficient disclosure to satisfy article 57 goes hand in hand with sufficiently enabling disclosure. General principles Board’s approach in relation to article 57 in relation to biological materials.

IPPT20080709, UKHL, Conor v Angiotech
Sufficiency and obviousness: Threshold test that specification discloses enough to make the invention plausible; […] that the patent will work. Obviousness and obvious to try: Patent law does not require demonstration that taxol actually works to prevent restenosis. Correct question was whether it was obvious to use a taxol-coated stent to prevent restenosis.

IPPT20041021, UKHL, Kirin Amgen v Hoechst
Purposive construction and article 69 EPC: Person skilled in the art reads [the claim or] the specification on the assumption that its purpose is to both to describe and to demarcate an invention. Doctrine of equivalents and article 69 EPC: Article 69 firmly shuts the door on any doctrine which extends protection outside the claims. Equivalence: guidelines for purposive construction. Invention should normally be taken as having been claimed at the same level of generality as that at which it is defined in the claims. New technology: The question is whether the person skilled in the art would understand the description in a way which was sufficiently general to include the new technology. Insufficiency claim 19: no enabling disclosure: If the claim says that you must use an acid, and there is nothing in the specification or context to tell you which acid, and the invention will work with some acids but not with others but finding out which ones work will need extensive experiments, then that in my opinion is not merely lack of clarity; it is insufficiency.

IPPT19961031, UKHL, Biogen v Medeva
Question of definition of “invention” almost invariably academic. Commercial reasons irrelevant for determining inventive step. Inventive concept: idea of trying to express unsequenced eukaryotic DNA in a prokaryotic host. Enabling disclosure: the specification must enable the invention to be performed to the full extent of the monopoly claimed (a product or a class of products). Invention claimed too broad: technical contribution consisted in showing that known recombinant techniques could be used to make the antigens in a prokaryotic host cell, which does not justify contribution justify a claim to a monopoly of any recombinant method of making the antigens. The claimed invention is too broad […] due, not to the inability of the teaching to produce all the promised results, but to the fact that the same results could be produced by different means. Question of sufficiency: relevant date for compliance is the date of application.

IPPT19801127, UKHL, Catnic Components v Hill & Smith
Patent specification should be given a purposive construction. The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an 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 invention worked.

IPPT1913, UKHL, Gillette Safety Razor v Anglo-American Trading

Gillette defence of applying the prior art: secure if he knows that that which he is doing differs from that which has been done of old only in non-patentable variations, such as the substitution of mechanical equivalents or changes of material, shape, or size. The defence that 'the alleged in-fringement was not novel at the date of the plaintiff's letters patent,' is a good defence in law, and it would sometimes obviate the great length and expense of patent cases if the defendant could and would put forth his case in this form, and thus spare himself the trouble of demonstrating on which horn of the well-known dilemma the plaintiff had impaled himself, invalidity or noninfringement