The Court of Appeal has considered the obviousness of patents in two recent cases. It is underlined that there is no "obvious to try" test and in each case upheld the decision of the judge at first instance.
Novartis AB v Generics (UK) Limited (trading as Mylan)[2012] EWCA Civ 1623 was an unsuccessful appeal from the decision of Floyd J ([2011] EWHC 2403 (Pat), to revoke UK Patent No. 2203040 and the corresponding Supplementary Protection Certificate SPC/GB98/038 on the ground of obviousness.
The patent related to the (-) enantiomer form of rivastigmine, used for treatment of Alzheimer's disease. A racemic mixture (that is, a mixture of (+) and (-) enantiomeric forms) of rivastigmine was proposed for treatment of Alzheimer's disease in the prior art.
Novartis argued that the invention was not obvious under the "obvious to try with a reasonable expectation of success" test. Kitchin LJ disagreed, emphasising with reference to his decision in MedImmune v Novartis [2012] EWCA Civ 1234 that the statutory question, "was the invention obvious?", should not be paraphrased. He stated that:
I reject the submission that the court can only make a finding of obviousness where it is manifest that a test ought to work. That would be to impose a straightjacket upon the assessment of obviousness which is not warranted by the statutory test and would, for example, preclude a finding of obviousness in a case where the results of an entirely routine test are unpredictable.
The judge quoted with approval the comment of Diplock LJ in Johns-Manville Corporation's Patent [1967] RPC 479 that:
The correctness of a decision upon an issue of obviousness does not depend upon whether or not the decider has paraphrased the words of the Act in some particular verbal formula. I doubt whether there is any verbal formula which is appropriate to all classes of claims.
Lewison LJ agreed, commenting that:
This is another case in which a patentee defending his patent has attempted to analyse a single multi-faceted question ("was the invention obvious?") by chopping it up into a series of sub-questions, and then treating each of the sub-questions in isolation. For the reasons explained by this court in MedImmune that is the wrong approach.
In relation to obviousness of separating out one enantiomeric form from a racemic mixture, Kitchen LJ commented that:
Resolution of enantiomers is often relatively easy and so it is good science to get on and do it. This is not a matter of experimentation in the hope that something may turn up; it is experimentation driven by rational technical considerations... I reject the submission that the inherent lack of predictability in chiral chemistry precludes a finding of obviousness as a matter of law.
Smith & Nephew PLC v Convatec Technologies Inc.[2012] EWHC 1602 (Pat) is another case where the Court of Appeal upheld the judge, this time Birss HHJ acting as a judge of the patents court.
In the appeal, Smith and Nephew contended that the judge fell into error in failing to find the patent obvious in view of a prior art document Kredl. None of the other findings were challenged.
The patent claim in issue related to a method of preparing a light stabilized antimicrobial material.
The prior art, Kreidl, related to disinfectant products and to methods of making them; and it particularly related to disinfectant products containing silver in combination with halogen. The difference between the inventive concept of the patent and the disclosure of Kreidl is that Kreidl does not describe the use of the invention in relation to gel forming fibres such as Aquacel. The critical question was whether this difference constituted an obvious step to take at the priority date.
Smith and Nephew argued that the judge had erred when, at first instance, he considered whether the skilled team would carry out a simple and straightforward test to see if the clear teaching of Kreidl would work on Aquacel, using materials readily to hand. Smith and Nephew argued that Birss HHJ erred because he was looking for a guarantee or certainty of success or, at the very least, too high an expectation of success.
The appeal was dismissed. It was noted that Kreidl taught a method which, if applied to Aquacel, would have worked and would have been a method in the claim. Further, it would have been easy to perform, requiring no great time or effort. However, the appeal judgement warned that it is all too easy to find an invention obvious with the benefit of hindsight. The issue of obviousness must be considered without any knowledge of the invention. The judge found this was a field in which the skilled team would not embark upon an experiment without thinking about its rationale. They would have read Kreidl with interest and not simply put it on one side; but it would have presented them with a puzzle. In the result the judge found it was not obvious to apply the teaching of Kreidl to modern wound dressing materials such as Aquacel. That conclusion was upheld at appeal.
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