In the last few weeks the House of Lords has given its judgement as to what a product claim needs in order to be sufficient. Both the Court of Appeal and the High Court have refused to excuse patentees for failing to pay renewal fees in time, with the consequence that the patents were terminated. The High Court has also considered obviousness, and the claim language used to claim a Virgin Atlantic Upper Class seat.
Sufficiency of a Product Claim
Generics v Lundbeck
[2009] UKHL 12
House of Lords
Appellate Committee
Lords Phillips, Scott, Walker, Mance and Neuberger
25th February 2009
Lundbeck was the proprietor of patents, now expired, for the antidepressant drug citalopram. It was disclosed in those earlier patents that citalopram is a racemate made up of two enantiomers. Lundbeck managed to separate the racemate into its enantiomers and found that the antidepressant effect was caused entirely by the (+) enantiomer. The patent in this case, European patent (UK) 0347066, included Claim 1 to the (+) enantiomer itself, Claim 3 to a pharmaceutical composition comprising that compound, and Claim 6 to a method for the preparation of the compound. Kitchin J found at first instance that Claim 1 and Claim 3 were insufficient.
On appeal, the Court of Appeal panel, included one of the Law Lords, Lord Hoffman. In his judgement, Lord Hoffman agreed that the claims were neither anticipated nor obvious, but allowed Lundbeck's appeal against the revocation of Claims 1 and 3 on the grounds of insufficiency.
In this judgement, the Law Lords of this Appellate Committee, which included judges very experienced in patent matters, upheld the Court of Appeal decision.
As set out by Lord Neuberger "The only point in issue on this appeal is that on which the Court of Appeal disagreed with Kitchin J, namely whether the claim to the (+)-enantiomer was insufficient. Accordingly, we are proceeding on the basis that the enantiomer is a new product, in particular as against the racemate, and on the basis that the obtaining of the enantiomer was not obvious. The question is whether the claim fails on the ground of insufficiency."
It was accepted that the claimed invention satisfied all the requirements of Section 1(1) in that the invention was new, involved an inventive step, was capable of industrial application, and was not excluded. Therefore, it was necessary to look to Section 14 of the Patents Act 1977 to see if any other objections could be made to the patent. As noted by Lord Neuberger, Kitchin J had "concluded that, as the specification disclosed that the respondent had found only one way to make the (+)-enantiomer, it would be a monopoly disproportionate to the technical contribution if the Patent effectively covered all ways of making the enantiomer, which would be the effect of the product claim. The principle he relied on was... ... "The first person to find a way of achieving an obviously desirable goal is not permitted to monopolise every other way of doing so".
"The sole authority upon which Kitchin J relied in support of this analysis was the speech of Lord Hoffman in Biogen [1997] RPC 1."
Lord Neuberger concluded "that, unless precluded by the reasoning in Biogen [1997] RPC 1... the product claim in the present case is valid. I appreciate that this means that, by finding one method of making a product a person can obtain a monopoly for that product. However, that applies to any product claim. Further, where (as here) the product is a known desideratum, it can be said (as Lord Walker pointed out) that the invention is all the more creditable, as it is likely that there has been more competition than where the product has not been thought of."
The case was distinguished from Biogen which had had a very unusual claim described as "almost a process-by-product-by-process claim".
"Kitchin J is by no means alone in having taken the mistaken view that the reasoning in Biogen [1997] RPC 1 is of much wider application, and in particular that it applies to any product claims (at least where they are claims to chemical compounds)... ..."
"When considering the validity of a simple product claim (such as is under scrutiny on this appeal), it may be that concentrating on the identification of the inventive step rather than the technical contribution can lead to error. "Inventive step" suggests how something has been done, and, in the case of a product claim at any rate, one is primarily concerned with what has been allegedly invented, not how it has been done."
All five Law Lords found the product claims to be sufficient and dismissed the appeal.
Restoration of patents which lapsed unintentionally by non-payment of renewal fees
Refusal by proprietor to provide evidence
Matsushita Electric v Comptroller
[2009] EWCA Civ 134
Court of Appeal
Mummery, Rimer LLJ
28th January 2009
At first instance, Mann J dismissed an appeal from the decision of the Comptroller refusing to restore a number of British patents. Mr. Ryan, a solicitor acting on behalf of Matsushita, had told the Patent Office that:
"It is therefore not for your office to enquire whether there has been a change of mind or otherwise by the proprietor, all the Comptroller is seized with is whether the failure to pay the necessary fee was unintentional. Once the proprietor has stated so that is the end of the matter."
As well as dismissing the appeal Mann J also refused to remit the application for restoration back to the Patent Office for further consideration.
The applicants sought permission from the Appeal Court in November 2008 to appeal Mann J's judgement and were refused by Jacob LJ because the proposed appeal did not involve any question of law. This was a renewed application for permission to appeal.
The Court of Appeal refused permission to appeal and refused remission to the Comptroller. Giving judgement, Mummery LJ commented
"As a matter of discretion, it seems to me quite wrong that a party, having taken a view that what they have done is sufficient, should, without reserving their position expressly, argue a point, lose it and then seek to reargue it on a different basis. It would have been possible for Mr Ryan to have made a reservation of his client's position by putting in evidence saying that it was without prejudice to their primary contention that what they had already put in was sufficient... (It was put) to us that Mr Ryan was doing a service to the profession by taking a stand for the purposes of getting a ruling on this particular point. I say, in my view, it was open for him both to run the case in the way that would get a ruling on that point and protect the position of his clients by covering the position with some further evidence."
Impecunious patentee
Bending Light's Application
[2009] EWHC 59 (Pat)
Kitchin J
30th January 2009
This was an appeal from a decision of the Comptroller rejecting Bending Light's application to restore British patent 2342726 following a failure to pay a renewal fee. The renewal fee had been due on 15th September 2004 and was not paid at that time nor by the extended date of 15th March 2005. An application for restoration was made on 13th April 2006, in time.
As the patent ceased to have effect before 1st January 2005 restoration was dealt with under the unamended Section 28(3) which required that the Comptroller had to be satisfied that "the proprietor of the patent took reasonable care" to see that any renewal and additional fees were paid in time.
Bending Light is a company with a patent portfolio, which following the death of the inventor, is run by an executive Chairman, Mr. Willetts, on a part-time basis. Mr. Willetts decided not to renew the patent at the normal due date and then did not have it renewed within the six month grace period because, he maintained, the company's funds were needed for other purposes. The UKIPO refused the application for restoration because Mr. Willetts had chosen to use available funds for other purposes.
The judge agreed that Bending Light had not established that it took reasonable care to ensure that the appropriate fees were paid by 15th March 2005. It had money. It also had potential liabilities but it did not, for example, try to explain to potential creditors the consequences of failing to pay the patent fees. The appeal was dismissed.
Obviousness
Sustained release statin
Actavis v Novartis
[2009] EWHC 41 (Ch)
Warren J
16th January 2009
Actavis sought to revoke European patent (UK) No. 0948320 of Novartis on the grounds of obviousness and insufficiency. The claims related to sustained release pharmaceutical compositions comprising a water soluble salt of fluvastatin as an active ingredient. The claims required that the active ingredient be released from the sustained formulation over more than three hours.
The prior art showed that fluvastatin was a known statin. Fluvastatin sodium was also known, and the concept of sustained release was well known and well understood.
Warren J, concluded "that the only argument against the obviousness of claim 1 is that, in fact, nobody – whether clinician, formulator or commercial boss – would in fact have thought of actually producing a formulation within claim 1 as an end in itself; there would simply have been no motivation to do so."
"this absence of motivation does not prevent claim 1 from being technically obvious. The skilled team would, for reason already given, not reject a sustained release formulation out of hand."
Warren J found all the claims of the patent which were said to be independently valid to be obvious. The attack that the patent was insufficient was swiftly rejected.
CSEM methods to search for oil
Schlumberger v Electromagnetic Geoservices
[2009] EWHC 58 (Ch)
Mann J
19th January 2009
Mann J was informed that his judgement in this case was a price sensitive matter which could affect the valuation of EMGS on the Oslo Stock Exchange. He therefore provided a summary judgement on 19th January 2009 at 4.30pm in which he revealed that he had found three patents of EMGS to be novel and sufficient, but obvious in view of specific prior art documents.
The action related to three patents concerned with controlled source electromagnetic (CSEM) methods for surveying subterranean strata to determine whether hydrocarbons or water is present. In the first patent, the method measured resistivities of various layers in the strata to determine whether a refracted wave was present or not. The inventive concept was the use of this wave for the direct detection of hydrocarbons.
This patent was found to be obvious over the disclosure in a paper describing the same principles of physics in the context of geological exploration. The paper identified the underlying physics but did not immediately relate this to the operating field of the patent. The author of the prior document thought it would be obvious to use the techniques he had described to search for or identify hydrocarbon layers. The judge accepted the view of the author and concluded that the invention was obvious.
Schlumberger contended that the skilled addressee had to be a team which included a CSEM expert otherwise the patent was insufficient. However, oil companies and oil exploration companies do not routinely involve CSEM specialists in their surveys and it was contended by EMGS that such a specialist could not be a part of the team. Mann J pointed out that
"The skilled addressee is a notional construct for the purposes of the statute. One does not identify him/her, or the constituents of the team, by finding some actual equivalent in the real world. The addressee is a notional person to whom the patent is taken to be addressed. Obviously the real world provides a context, but the absence of any CSEM specialist on the exploration teams of any oil company, or the absence of any involvement of such a specialist with such a team, is not necessarily determinative of the appropriate addressee of the patent."
Construction
Virgin v Premium Aircraft Interiors
[2009] EWHC 26 (Pat)
Lewison J
21st January 2009
Virgin alleged that their European patent (UK) 1495908 had been infringed by Premium Aircraft Interiors (known as Contour).
The Virgin patent claims a passenger seating system for an aircraft. It was common ground that to be infringed, the claim had to be construed to cover constructions in which the seat part formed the bed rather than be limited to the seats Virgin use in their Upper Class which have a "flip-over" construction in which self contained integers form the bed.
Claim 1 required the provision of seat units and defined features of each seat unit. The claim then went on to require "each seat unit... further comprising means forming or being configurable for forming a substantially flat bed (47, 48, 67, 74, 76)".
Virgin argued the language of the claim simply required that as well as having elements which could form a seat, each seat also ("further") had elements which can form a substantially flat bed. There was no requirement in the claim that the elements forming the bed be completely distinct from the elements forming the seat. They also argued that the division in the claim between a pre-characterising clause and a characterising clause and their discussion in the patent of the BA First construction made it clear:
"that the patentee considered that all the integers of the pre-characterising parts of the claim were present in BA First. Since BA First did not have flip-over seats, the patentee cannot be taken to have limited the claim to flip-over seats in the pre-characterising part of the claim. This integer is in the pre-characterising part of the claim and cannot therefore be taken to be limited to flip-over seats".
Lewison J disagreed. He noted that the conventional meaning of the word "further" is "additionally".
"The fact that it is the seat unit, rather than the seat, which must "further" comprise the bed means seems to me to emphasise that the claim is speaking of something different from the seat itself."
"At best, from Virgin Atlantic's standpoint, the word "further" is ambiguous. But in that event it is clear that the reference numerals in the claim itself (as well as the specification and drawings) can be used to resolve the ambiguity. And they point clearly to a separation between the seat and the bed means."
Therefore, the judge determined that, although the Virgin patent was valid, it was not infringed by the Contour seat.
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