UK: Recent Decisions In The English Courts

Infringement
Recovery of Damages on Transfer, Section 33

Thorn v Siemens [2008] EWCA Civ 1161

Court of Appeal: Mummery, Arden and Lewison LJJ: 22nd October 2008

In October 2007, Mann J found European patent (UK) No. 0577094 to be both valid and infringed. In this appeal there was no challenge to the decision on validity but the question as to whether the patent had been infringed was appealed. The appeal court also considered whether Siemens were entitled to recover damages in respect of the period of infringement which predated their registration as proprietor of the patent.

Infringement

Mummery LJ, giving the judgment of the court, upheld the judge's construction of Claim 1 of the patent. However, whilst acknowledging that they should proceed with caution in reversing an infringement judgment which would have been based on the judge's evaluation of the facts, the appeal court did not agree with him that the evidence supported a finding of infringement.

The patent claimed a printed circuit board having a protective coating consisting of a film made from a thermoplastic material. The thermoplastic material incorporated wax to improve its flow properties. In the claim, the wax was said to facilitate "through-plating" and soldering operations through the protective coating. The film, in the claim, was said to be "fused" onto the printed circuit board by the action of heat.

The judge had identified several practical benefits which arose if the wax facilitated through-plating. The appeal court did not agree with him that the evidence "supported the finding that this possible theoretical benefit of a coating with wax had been proven to be a practical benefit present in Thorn's coating." The appeal court also found that in the Thorn product, whilst heat was applied to provide optimal conditions for fusion, the adhesion or fusion was by the application of pressure. Therefore, they concluded that the Thorn product did not infringe the patent.

Transfer

The original owner of the patent merged in 1998 and there was a second merger in 1999. The effect of the first two mergers, which were both under Swiss law, was not registered at the British Patent Office until 2002. A third merger taking place in September 2004 was registered within six months. It was therefore necessary to consider whether Siemens were barred from recovering damages by virtue of Section 68 of the Patents Act 1977.

Before it was changed in April 2006, Section 68 provided that damages or an account of profits should not be ordered unless the transaction was registered. The amended Section 68 removes the bar on the recovery of damages and, instead, provides the lesser bar of one on the recovery of costs and expenses.

Mann J had determined that whilst the mergers under Swiss law provided that transfers of the property should take place, a merger did not effect the transfer itself. In the judge's view, the transfers of the patent were by operation of law, and this was not a transaction as set out in Section 33 of the Patents Act. Mann J therefore held that the transfer fell outside the regimes of Sections 33 and 68. Therefore, any damages recoverable were not limited by Section 68 of the Patents Act 1977.

Mann J accepted that the result was anomalous or, as set out in the grounds of appeal, had "opened up a large lacuna in which the purpose of [s 68] is defeated".

The appeal court disagreed. They judged that "The term "assignment" is inherently capable of more than one meaning." Warning against a narrow literal approach, they considered the opening words of Section 33(3) "transactions, instruments or events" were wide and open textured.

"There is no reason why an assignment, if given a wide meaning, should not be an instrument in some circumstances and an event in other circumstances, or a combination of an event and an instrument in other circumstances."

Therefore, the appeal court set aside Mann J's decision that the transfer was not covered by the provisions of Section 33(3). They also overruled an earlier decision of Mann J in Tamglass Ltd OY v Lyoyang Glass technology Co Ltd [2006] EWHC 655 (Ch):

"that an assignment had to be an express consensual bilateral document transferring a patent."

Added Subject Matter
Construction and Infringement

Corus v Qual-Chem: [2008] EWCA Civ 1177

Court of Appeal: Pill, Scott and Jacob LJJ: 29th October 2008

HHJ Fysh QC sitting in the Patents County Court held in February 2008 that Qual-Chem's UK patent No. 2363635 was valid and infringed. Lord Justice Jacob, giving the first judgment, dismissed the appeal which had been restricted to a single issue of non infringement and to an allegation of added subject matter.

Jacob LJ remarked:

"Although Corus pleaded many more points originally, the Judge had to deal with what, by my count, were no less than 10 discrete points or sub-points. The taking of many points is often the mark of a party which does not feel it has a single "killer". So it proved before the Judge who rejected all of them."

Added Subject Matter

There were no questions of legal principle in this terse judgment. Jacob LJ noted that the authorities for the added subject matter objection were well known and quoted from his own judgment in Richardson-Vicks Patent [1995] RPC 568:

"..the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification."

Construction

Corus had contended that whereas the granted patent claimed a method of cooling or treating slag, the A specification was confined to the treatment of molten iron. This attack was rejected.

The claim of the patent included an integer requiring

"the conveying gas pressure being tailored with respect to the conveyed additive material to cause the conveyed additive material to penetrate into and remain in the slag."

Corus contended that "being tailored" meant that once all the other variables had been selected,

"the pressure had to be adjusted (tailored) so that additive was conveyed into and remained in the slag. You could only infringe if your apparatus had some pressure adjustment means."

These submissions were rejected.

"Given the known purpose I think the skilled reader would read the word "tailored" meaning "so arrived at" or "chosen" so as to have the desired effect. To carry out the method there are a variety of variables which must be adjusted in interdependence on others – one of these is the pressure. If that is correct for the rest of the variables then it is "tailored" within the meaning of the claim. Giving it that meaning is not ignoring it."

"The conclusion is reinforced by the body of the specification. It uses "tailored" for other variables such as the gun and the briquettes of additive. In context the word clearly includes "selected so as to be suitable for."

Declarations of Non-Infringement

Gore v Geox: [2008] EWHC 2311 (Pat)

Floyd J: 7th October 2008

Gore sought a declaration of non-infringement of patents of Geox and the revocation of those patents. The Court of Appeal had previously ordered an expedited hearing, and Floyd J agreed to hear these matters in a limited trial slot in September. Geox had acknowledged non-infringement of two of the patents in suit and Floyd J had also ordered that the issues of validity of those two patents should come on at a later hearing.

This case was concerned with two Geox patents, European patent (UK) 0858270 ("270") and European patent (UK) 1185183 ("183"). The issues considered were the validity of each of the patents, whether a cemented product of Gore infringed 270, and whether an injected product of Gore infringed 183.

The patents were concerned with shoes having a waterproof and a breathable sole. In the judgement, Floyd J construed the main claims of the patent and then considered whether products made to submitted process descriptions would infringe the claims as construed. On the facts, the judge found that both patents were valid.

Construction

Not surprisingly, Gore argued for a very specific and limited construction to the language of the claims. For example, they argued that a mid-sole said to comprise a number of layers had to mean a unitary assembly positioned in the sole above the tread. Floyd J rejected such submissions in favour of a construction in which the term covered a number of layers in the stack between the insole and the tread.

However, in looking at the construction of 183 which used the term "unitary assembly" Floyd J decided that:

"a unitary assembly is, in my judgment, something more than a mere assembly. In the context it brings to mind an assembly which is held together in some way as a unit in the first step before it is brought into contact with the perforated elastomer sole."

Infringement

On the facts Floyd J found that the cemented design would infringe 270 but that the injected design would not infringe 183. However, he was critical of Gore's product description which included, for example, the following passage:

"The connections between the sole and upper assembly firmly attach the upper assembly to the sole but do not form a perimetrical waterproof seal in the completed shoe. For the avoidance of doubt, a perimetrical seal (i.e. a watertight connection) is not formed between the insole laminate and the sole. Such a perimetrical seal is not required as the upper assembly is already sealed in a waterproof way."

The constructional issues included the meaning of "perimetrically sealed", and identifying the location of the seal. Floyd J thought that:

"The paragraph is typical of what a product description in a declaratory action should not do. The purpose of a declaration of non-infringement is to clear away disputes about infringement of a patent on the basis of a clear description of the product. Statements in argumentative or conclusory terms based on one side's disputed interpretation of a term used in the claims simply cannot achieve this object."

Cross-Undertaking in Damages

Les Laboratoires Servier v Apotex: [2008] EWHC (Ch) 2347

Norris J: 9th October 2008

Servier took action against Apotex, a manufacturer of generic drugs under its European patent and, having found that Apotex was already selling a generic product, made an application for an immediate interim injunction. Mann J accepted Servier's submission that Apotex's damages were more easily capable of calculation than its own and he granted an injunction restraining Apotex from selling perindopril until trial. At the expedited trial the European patent was found to be invalid and the injunction was discharged. In May 2008 the Court of Appeal refused to extend the injunction and confirmed the invalidity of the patent.

This hearing was to consider the enforcement of a cross-undertaking in damages.

Norris J took as the approach to assessment that set out in the obiter observation of Lord Diplock in Hoffmann-La Roche v Secretary of State for Trade [1975] AC 295, namely:

"The assessment is made upon the same basis as that upon which damages for breach of contract would be assessed if the undertaking had been a contract between the plaintiff and the defendant that the plaintiff would not prevent the defendant from doing that which he was restrained from doing by the terms of the injunction".

Norris J also noted that whilst Apotex had to establish its loss by adducing the relevant evidence he would not be over eager in his scrutiny of that evidence. To obtain the injunction Servier had had to persuade Mann J that the task of calculating Apotex's loss would be easier than the calculation of its own loss in the event that the injunction was withheld, and therefore:

"Having obtained the injunction on that footing it does not now lie in Servier's mouth to say that the task is one of extreme complexity and that the court should adopt a cautious approach."

In considering the calculation of damages, the judge considered the way in which the pharmaceuticals market operated and tried to determine what would have happened if there had been no injunction. In effect, he reconstructed the hypothetical market from August 2006 when the injunction was granted. From the facts and evidence before him he determined that Apotex would have had a sales volume of 226,509 per month, and he assumed the plateau price would be £4.47. On this basis he calculated that Apotex was entitled to receive £17,682,000 and awarded them £17.5 million in compensation.

After the enquiry and whilst preparing his judgment Servier made an application to amend its pleadings because of activities in Canada. The judge declined to permit any amendment and decided the case as pleaded, evidenced and argued. He noted that:

"The Canadian litigation featured in the evidence and in the argument before me, but no-one suggested that it might render the whole enquiry otiose. The first time it has been suggested that I might exercise a discretion not to proceed with the enquiry at all is after the conclusion of evidence and argument on the enquiry itself. This is simply too late: I do not think the point can be elaborated."

Novelty of Individual Compounds
Selection

Dr Reddy's Laboratories v Eli Lilly: [2008] EWHC 2345 (Pat)

Floyd J: 13th October 2008

Dr Reddy's Laboratories sought revocation of European patent (UK) No. 0454436 of Eli Lilly. The patent protected olanzapine, which is a widely prescribed anti-psychotic agent used for the treatment of schizophrenia.

At the time the Lilly patent application was filed first generation anti-psychotic drugs were available but, particularly with long term use, had serious side effects. A drug called chlorpromazine had been found which was just as effective against the symptoms of schizophrenia as the earlier drugs, and did not produce the same side effects. Unfortunately, chlorpromazine was found to fatally suppress white blood cells and was licensed for use only with weekly blood tests. Lilly were therefore seeking a replacement for chlorpromazine which did not suppress white blood cells.

Novelty

In 1974 Lilly had filed a provisional application, which was eventually granted as a UK patent, claiming a wide class of thieno-benzodiazepines having useful central nervous system activity. The class was defined by reference to a general formula and it was calculated that this was wide enough to encompass 10¹⁹ compounds, that is 10 billion billion compounds. The specification also listed 100 compounds by name but without giving details of physical properties.

It was agreed that the general formula was wide enough to cover olanzapine, but olanzapine was not listed in the 100 compounds and was not the subject of any examples. In his judgment, Floyd J reviews the law on novelty and concludes that:

"a generic disclosure will not normally take away the novelty of a subsequent claim to a member of the class. For example disclosure of "fixing means" is not a disclosure of a nail."

"The particular question which arises in this case concerns the effect of a particular kind of disclosure, namely that made by a chemical class formula or "Markush" formula. Such formulae are capable of encompassing many millions of compounds. In theory a person (or more likely a computer) could sit down and create a list of all possible individual compounds covered by the formula..."

"This question is addressed on a regular basis by the EPO in deciding applications for chemical patents under the EPC. They have developed a doctrine that a chemical class disclosure does not necessarily take away the novelty of an individual compound falling within the class."

The judge then reviewed various Board of Appeal decisions from the EPO and noted that these had been taken as settled jurisprudence and applied in the recent Court of Appeal case in Generics (UK) v H. Lundbeck AS [2008] EWCA Civ 311; [2008] RPC 19.

Selection

Floyd J considered selection inventions and referred to the judgment of Maugham J in I.G. Farbenindustrie's Patent (1930) 47 RPC 289 which identified the concept and included the requirement:

"that it is necessary for the patentee to define in clear terms the nature of the characteristic which he alleges to be possessed by the selection for which he claims a monopoly..."

"I conclude that

1. In relation to lack of novelty, it is doubtful in the light of the EPO jurisprudence whether a newly discovered effect complying with Maugham J's principles could overcome a finding that a compound was specifically disclosed in a prior document.
2. Whether or not that is so, provided there is novelty on conventional grounds, obviousness is to be decided according to ordinary principles.
3. The existence of an advantage possessed by the selected compound will be relevant to the overall assessment of obviousness, but is not an essential prerequisite.
4. Compliance with Maugham J's principles in IG Farbenindustrie's Patent is equally not an essential requirement for inventive step to be found."

Floyd J found that the claims of the patent were both novel and non-obvious. He noted that he had not found the commercial success of olanzapine helpful in deciding the issue of obviousness. The judge also had to deal with insufficiency attacks and commented:

"All these insufficiency attacks are based on the premise that the patent can only be upheld over the disclosure of the 235 Provisional Specification if it is a valid selection patent. As I have endeavoured to explain, I have felt able to hold that olanzapine is both novel and not obvious as a chemical compound without reliance on selection principles. In those circumstances the insufficiency attack does not arise."

Invalidity of an SPC
Effect of Short Term Disclosure

Generics (UK) Limited v Daiichi Pharmaceutical: [2008] EWHC 2413 (Pat)

Kitchin J: 15th October 2008

European patent (UK) No. 0206283 of Daiichi claimed levofloxacin and a process for its preparation. Levofloxacin is the (-) enantiomer of a racemic compound called ofloxacin. Ofloxacin was known to be an excellent synthetic anti-microbial and levofloxacin has proved to be a broad spectrum anti-microbial of low toxicity.

Although the patent dated from June 1986, UK marketing authorisations in respect of levofloxacin were not granted until June 1997. An SPC was granted on 13th July 1998. The patent expired on 20th June 2006 but the SPC is now in force and will expire on 19th June 2011.

Generics challenged the validity of the SPC because grounds exist which would have justified revocation of the patent. They also attacked the SPC based upon earlier marketing authorisations for ofloxacin.

Priority Date

The priority date of the patent had to be established because it was accepted that if the earliest priority dates were lost, the claims were anticipated. Generics argued that the patent as granted included subject matter about reduced toxicity and increased water solubility which was not contained in either of the first or second priority documents. Thus, to the extent that Daiichi rely upon any of this matter as supporting the inventions as claimed, then those inventions are not entitled to claim the priority dates of the first or second priority documents.

Kitchin J noted:

"In considering this contention it is, in my judgment, important to distinguish between the priority date of a claimed invention and the priority date of matter contained in an application..."

"Each of the claims in issue is plainly disclosed in the first and second priority documents. Moreover, there is no dispute that those priority documents do permit the skilled person to perform each of those claimed inventions without undue difficulty. In my judgment the fact that those priority documents contain nothing about reduced toxicity and increased water solubility is irrelevant. They are not features of the claimed inventions."

However, it was a separate question as to whether Daiichi could rely upon the disclosure of reduced toxicity and increased solubility in support of their case of non-obviousness:

"Where the claim to priority is properly made, as here, I do not believe a patentee can seek to bolster the inventive nature of his monopoly by seeking to rely on a discovery which he has not made at the date of the priority document and which is not foreshadowed in his disclosure and could not be predicted from what he has described."

Novelty

Because the claims had been found entitled to their earliest priority date, one novelty attack necessarily failed. The other novelty attack was based on a publication disclosing ofloxacin and a way of making it. It was argued that the skilled person would immediately recognise that ofloxacin is a racemic mixture of two enantiomers and that accordingly levofloxacin is disclosed. In support of this argument Generics relied upon a series of decisions from the German Federal Patent Court which took the view:

"that if the skilled person would recognise that the disclosed compound comprised a racemate and so contained a mixture of two enantiomers and if he could resolve the mixture using conventional techniques then the disclosure would deprive each enantiomer of novelty."

Kitchin J thought the German approach conflated novelty and obviousness and was not in accordance with novelty decisions such as Synthon BV v SmithKline Beecham [2005] UKHL 59 from the House of Lords. He concluded that the prior art did not contain a clear description of, or clear instructions to do or make, something that could infringe the patentee's claim and that this was the test required.

"(The documents) are both concerned with the ofloxacin racemate. Neither teaches or even suggests resolution of the racemate into its two enantiomers. Performance of the subject matter of these publications would result in the production of ofloxacin, not levofloxacin. it would not constitute an infringement of the claimed invention because, as (Generics) accepts, the claims do not extend to the racemate. I feel reinforced in this conclusion by the decision of the Court of Appeal in Generics v Lundbeck [2008] EWCA Civ 311."

The attacks that the patent was anticipated therefore failed.

Obviousness

One obviousness attack set out a number of steps which Generics contended it would be obvious to perform starting from a particular document. The judge cast doubt on this step by step approach because:

"obviousness is at the end of the day a single issue to be determined in the light of all these matters taken together."

All of the various obviousness attacks failed.

Short Term Disclosure

One obviousness attack contended that the invention was rendered obvious by a combination of the information in a poster which was in a public place for two hours in 1982 and common general knowledge at the priority date in 1985 of the patent. Daiichi had argued that the combination of information never existed and indeed could never have existed.

Kitchin J determined that the information in the poster had clearly been made available and he noted that:

"In the case of information contained in a document, it is the theoretical possibility of having access to the information which makes it available and part of the state of the art..."

"The next question is whether information can cease to be part of the state of the art at some point after it has been made available. I do not believe that it can. Under Article 54(2) of the EPC the state of the art comprises everything made available to the public by means of written or oral description, by use, or in any other way, before the priority date. The EPC does not contemplate the possibility that once information has been made available it can subsequently be withdrawn or that it can cease to be part of the state of the art after time."

It was therefore permissible to rely upon the information in the poster in combination with common general knowledge.

General

In making their objections as to obviousness, Generics had relied upon experiments they had provided. The nature of these experiments were criticised but Kitchin J was reluctant to impose any particular obligations on those carrying out experiments but he did comment that:

"if relevant questions do arise as to how experiments were designed and how they came to be conducted as they were, and if the witnesses attending court are unable to address such questions, then the weight which the court can attach to the experiments may be substantially reduced."

The judge did not find any help in the commercial and technical success of levofloxacin put forward by Daiichi in support of their arguments that the claims were not obvious.

He noted that the insufficiency arguments would have to fall in view of the Court of Appeal decision in Lundbeck A/S v Generics UK Ltd [2008] EWCA Civ 311. However, even if Lundbeck should be reversed on appeal, the judge found that he would reject the attack on the facts of this case.

Kitchin J also determined that the process claim, which had not been in the application as filed, did not add subject matter. It was accepted that the subject matter of the process claim had been disclosed but it had been presented initially as three separate features. The judge rejected an attack that in presenting a single process claim the patent had unacceptably suggested a single aspect to have significance as possessing a distinguishing and unifying quality.

SPC Regulation

Generics contended that the UK marketing authorisations relied upon in support of the application for the SPC were not the first authorisations to place the product on the market as a medicinal product. This attack also failed. Earlier marketing authorisations had been granted, but these were for ofloxacin. The judge determined:

"that an authorisation to place ofloxacin on the market as a medicinal product cannot be considered an authorisation to place levofloxacin on the market as a medicinal product."

The judgment includes a review of the SPC regulation scheme and also of several decisions from the European Court of Justice.

Infringement

Ancon v ACS Stainless Steel Fixings: [2008] EWHC 2489 (Pat)

Patten J: 21st October 2008

Ancon sued ACS Stainless Steel Fixings for infringement of their European patent (UK) No. 0882164. The patent was concerned with heavy duty fixings for the construction industry and the main claim required a fixing to have a head with "a generally elliptical cone shape". It was common ground that the bolt head of the ACS assembly was neither elliptical nor cone shaped.

The patentee argued that the elliptical cone in its various forms illustrated in the patent provided a particular camming effect and produced specified advantages. The infringing product achieved the same effect.

"But it does not follow from this that one can construe the claims as covering any manufactured fixing that is capable of producing the same effect regardless of whether, as a matter of ordinary language, it can be described as a "generally elliptical cone"..."

"The argument that this leaves it open to a third party to take the benefit of the invention by using a differently shaped head is a familiar one. But the answer to it is that it is for the patentee to specify the limits to his claims."

The patent was found not to be infringed but the attacks on its validity failed.

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