IP Bulletin - Winter issue - 21 February 2012

RECENT DEVELOPMENTS

PATENTS

The Supreme Court considers the validity of Human Genome Sciences' Neutrokine Patent

In an important case for the bioscience industry the Supreme Court, while considering the matter of industrial application, concluded that the English courts should as a matter of policy follow established EPO jurisprudence.

Human Genome Sciences Inc v Eli Lilly and Co [2011] UKSC 51, 2 November 2011

http://www.bailii.org/uk/cases/UKSC/2011/51.html

The Supreme Court has allowed an appeal from the Court of Appeal's decision that claims to a new member of a family of proteins were invalid as not being capable of industrial application.

In 2008, Eli Lilly and Company (Lilly) applied to revoke Human Genome Sciences Inc's (HGS) European Patent (UK) 0,939,804 (the "Neutrokine Patent"). The Neutrokine Patent disclosed the nucleotide and amino-acid sequence of Neutrokine-, one of a family of proteins (the TNF ligand superfamily or TNF family) important in inflammation and immune responses. Kitchin J held that the patent was invalid for lack of industrial applicability. Before this decision, Lilly had brought opposition proceedings in the European Patent Office (EPO). The EPO had revoked the European patent on the ground that the claimed invention lacked any inventive step. Both the Patents Court and EPO decisions were appealed. The EPO appeal was heard before the hearing in the Court of Appeal.

The EPO Technical Board of Appeal ("TBA") allowed the appeal and held that the European patent as amended in the proceedings was valid. The Court of Appeal then heard its appeal and decided to uphold Kitchin J's decision rather than following the TBA. Leave to appeal to the Supreme Court was given to HGS (and Lilly cross-appealed on an insufficiency issue). The Supreme Court allowed the appeal and dismissed the crossappeal. The case was remitted to the Court of Appeal to deal with outstanding issues.

The central issue in the Patents Court and before the EPO was whether the Neutrokine Patent satisfied the industrial application requirements of Articles 52 and 57 of the European Patent Convention (EPC) so as to enable HGS to claim the encoding gene for Neutrokine-. Kitchin J examined the jurisprudence of the EPO for applicable principles, but concluded that the patent was invalid for lack of industrial applicability (a decision upheld by the Court of Appeal). The TBA, meanwhile, decided that the patent did satisfy the industrial application requirement. The Supreme Court recognised the importance of the case for the bioscience industry (the BioIndustry Association intervened with submissions) and concluded that the UK courts should as a matter of principle follow established EPO jurisprudence. It further held that Kitchin J and the Court of Appeal had not properly applied the relevant principles and considered the effect of these principles on the biotechnology industry. Accordingly, HGS's appeal was allowed and Lilly's crossappeal was dismissed.

Patent relating to alumina coatings for cutting tools invalid for insufficiency

A recent case concerning Sandvik's patent for alumina-coated cutting inserts raises interesting points on insufficiency, chemical compound selection patents and the burden of proof for a positive case for non-infringement.

Sandvik Intellectual Property AB v Kennametal UK Ltd and another [2011] EWHC 3311 (Pat), 15 December 2011

http://www.bailii.org/ew/cases/EWHC/Patents/2011/3311.html

The High Court has held that a patent relating to alumina coatings for cutting tools was invalid on the ground of insufficiency. The High Court also held that all (but one) of the claims were invalid for obviousness.

The Claimant, Sandvik, sued the Defendants, Kennametal UK Limited and Kennametal Europe GMBH ("Kennametal"), for infringement of Sandvik's European Patent (UK) No. 0 603 144 entitled "Oxide coated cutting tool", the oxide in question being alumina. Kennametal denied infringement and counterclaimed for revocation on the grounds of lack of novelty, obviousness and insufficiency.

Arnold J examined both the law and evidence on the types of insufficiency pleaded by the Defendants: "classical insufficiency", ambiguity and excessive claim breadth, and concluded that the first two types of insufficiency had been established. He also considered the Defendants' claim that the patent claims were invalid for obviousness on the ground that the difference over the prior art was an arbitrary selection, and held that this type of obviousness was not limited to chemical compound selection patents (an argument submitted by counsel for Sandvik which, according to the judgment, provoked lively dispute between counsel).

Concerning infringement, Arnold J held that, in the circumstances of the case, the burden of proof of a positive case for non-infringement fell on Kennametal, in particular because Kennametal had not revealed this case to Sandvik in sufficient time for Sandvik to carry out the necessary procedures (a TEM analysis) to test this case, despite Sandvik's requests for Kennametal to do so, and Kennametal had not itself carried out these tests. If Kennametal had made a timely disclosure of its case to Sandvik in response to requests, perhaps the burden of proof may not have been on Kennametal.

Arnold J concluded that Sandvik had established that, if the patent were valid, the Kennametal grades of insert made by two of the process combinations would infringe the product claims. However, the Kennametal grades of insert made by the other process combinations were not found to infringe the product claims, as sufficient experimental evidence to prove infringement had not been provided.

Too obvious to track suspected criminals and terrorists

In this Court of Appeal decision concerning devices which may be used to track suspected criminals and terrorists, the Court has allowed an appeal from a High Court decision that a method of breaking through the security system of the GSM mobile telephone system was not obvious and was valid.

MMI Research v Cellxion and others [2012] EWCA Civ 7, 24 January 2012

http://www.bailii.org/ew/cases/EWCA/Civ/2012/7.html

The Court of Appeal has allowed an appeal from a High Court decision that a method of breaking through the security system of the...