We posted a review of the first half of Gordon Harris’ review of the patent cases of 2014 earlier this week (see here). In this post we cover a selection of cases from the remainder of Gordon’s talk.
AGA v Occlutech asked “What constitutes disclosure?”. In this case clinical trials preceded the filing of the priority application by around a year and the question arose whether the devices in question had been disclosed in confidence within the context of the clinical trial. As it turned out, none of the doctors thought the clinical trial was confidential and the take home message here was that AGA should not have assumed there was an air of confidentiality around the trials and should have obtained non disclosure agreements from all concerned.
First, some background. In Collingwood Lighting v Aurora Mr Justice Roth referred to Jacob LJ in Actavis v Novartis: “it is not enough that the skilled person could have arrive at the invention from the prior art, it must be shown that he would have done”
In Hospira v Genetech (II) Mr Justice Birss started considering obviousness in relation to the Pozzoli approach and also touched on the Technograph test. Gordon suggested that Mr Justice Birss may have done damage to both of these principles by casting doubt on the “could/would” formulation and also questioning the general applicability of the Technograph test.
Mr Justice Birss crossed paths with the Pozzoli approach again in Teva v Leo Pharma when he started the obviousness analysis and completed the first two steps of Pozzoli but then did not follow the standard formulation into step 3 of the test. This lead to a case that Gordon Harris considered unhelpful with the judgment possibly creating something of a mess.
In Teva v Astrazeneca the judge handed down his draft judgment on the issue of obviousness in light of CGK alone. This would have been fine except it wasn’t how Teva had pleaded the case (they went with a combination of a 1993 patent and CGK to invalidate the patent in question). The judge was apparently open about the error he had made (it seems that CGK alone had been on the table in initial pleadings but this had been dropped later on) and noted that he’d considered the 1993 patent closely in the context of anticipation and so if he’d found the patent invalid over CGK alone he’d certainly find it invalid of the combination with the 1993 patent.
In a case (Idenix v Gilead) about insufficiency, the judgment from Arnold J was most certainly sufficient, running to a whopping 621 paragraphs. Arnold J found that the patent posed the skilled person a problem and then tried to claim to solution to that problem. In other words the patent did not enable the skilled person to make the claimed compounds without undue burden.
In Hospira v Genetech it was suggested by the judge that when it comes to intermediate generalizations the issue may be considered differently in different technical disciplines, e.g. mechanical versus pharma.
We’ve already covered the administrative error from the EPO that sits at the heart of the Virgin v Zodiac case (see here) but there was a final return to this case at the Court of Appeal who endorsed the view that the UK has signed away the right to judicially review decisions of the EPO and that the EPO is the only body capable of reviewing its decisions.
In this case of course the error of the EPO lead to years and years of court cases and the EPO Examining Division refused to correct the original error despite the fact that everyone from the UK courts to the EPO’s own Opposition Division saw that an error had been made. In fact (World+Dog-Examining Division) could see the error!
Gordon pointed out that this case means that he cannot fully support the Unitary Patent System until this legal hole is closed up!
Mark Richardson 29 January 2015