Elephant in the Room

Various IPCopiers were present last week for the annual patent seminar at Gowling WLG, helmed by the inimitable Gordon Harris.

Alex Brodie opened with some potentially unsettling statistics.  Although the numbers of decisions, decisions per court, number per subject matter and type of action were almost identical between 2015 and 2016, the ‘win’ (valid/infringed, valid (at least in part) and infringed) vs. loss stats differed markedly: 

2015:  roughly 50:50

2016:  only 17% ‘wins’, with 16 of 24 (67%) held invalid

Heavy caveats were applied to these stats, but eyebrows have been raised at the prospect of this becoming a trend.  Gordon Harris in closing noted that the main judges (Arnold, Birss, Carr) seem to be working well together, but that the last time this happened was Jacob/Laddie/Pumfrey.  Is everything set to become obvious again?

Onto some excerpts from the brief summaries of cases, keywords emboldened:

Napp v Dr Reddy’s – from commencement to appeal in six months!  It can be done!

– interpretation of numbers in specifications: “10%” means 9.5 to 10.5%; “about 10%” means you are lucky “about” has not been held to lack clarity (thus insufficient/not infringeable).  Or 9 to 11 %.

– what proportion of products infringing is de minimis, and can thus be discounted?  Arnold J skilfully avoided drawing a line or outlining a principle, but both 1 in 69 million and 1 in 250,000 in this case would be de minimis.

Actavis v Eli Lilly (Tadalafil) – claim “A pharmaceutical unit dosage composition…said unit dosage form suitable for oral administration up to a maximum total dose of 5mg per day” would not be infringed if regulators only approved 20mg per day.

Warner-Lambert v Generics – the appeal, following Arnold J’s first instance long walk through where the intention had to lie for the Swiss form claim to be infringed.  Floyd LJ appears to say don’t bother with all that, the question is an objective one: does the manufacturer know or can they reasonably foresee that there will be intentional use for the product?  “Intentional use” here meaning not prescribed for something else.

– Floyd LJ: plausibility (see also Idenix below) is a very low-threshold test, barely a barrier at all to defeating an insufficiency attack.

Meter-Tech v British Gas – experimental use?  The use here was to test the market for the smart meter, not to test the subject matter of the invention, so no experimental use defence.

FKB v Abbvie Biotechnology – relating to Arrow declarations (like s.71 declarators as to non-infringement, where the patent is not yet granted).  Suggestions that Abbvie’s alleged stalling of the EP applications (not approving text, abandoning but filing divisional, de-designating GB) was to avoid UK court decision on its patentability; FKB sought declaratory relief.  Essentially Carr J concluded that an Arrow declaration could be possible in this case.  In a second FKB application for a declaration, Arnold J largely agreed.  The Court of Appeal also considered that at trial a judge may well grant this form of relief.

– Conclusion?  If your strategy is to drag out proceedings (e.g. using divisionals) to put off a court decision, you may in future find an Arrow declaration pointed in your direction.

Accord v Medac – more evidence that the courts are sceptical, to say the least, of arguments over common general knowledge alone: “combination of features…necessarily created with hindsight…and worse [not found] as a pre-existing combination in the prior art”.

Richter Gedeon v Generics – prior art was a WHO report stating dose as 1.5g.  Sales J concluded it required no invention to assume, or make simple enquiries to the effect that, this should have been 1.5mg.  Sir Robin Jacob on appeal essentially agreed.

Hospira v Genentech – a reminder that the court of appeal is reluctant to overturn the court on obviousness.  A firmer line on ‘obvious to try’ than Jacob in St Gobain.

Idenix v Gilead – on AgrEvo obviousness (not inventive if no technical contribution), the technical effect must be plausible, and to be plausible there must be some real reason for supposing the statement is true (but no more than that).

Merck Sharp & Dohme v Shionogi – Arnold J: insufficiency/plausibility is a two-stage question, 1) read disclosure: is the invention plausible across the scope of the claim? Then 2) does evidence establish that in fact the invention cannot be performed across this scope.  Again, there must be a real reason for supposing the invention will have the effect.  However, no reference to Warner-Lambert’s (see above) low threshold test…

NGPOD Global v Aspirate N Go – Mann J: UK IPO hearing officers on deciding whether to decline to deal with entitlement per s.37(8) and refer it to the court, question is what is the proper venue, not can the H.O. trim the case down so it fits the IPO!

Finally, the seminar was entitled “The Elephant in the Room”, namely the UPC – what now?  IPCopy’s theory of a possible government defence of the apparent UPC(CJEU)/Brexit dichotomy (trichotomy?) was raised, but neither shouted down nor laughed at.  Perhaps we’re onto something?

Adam Brocklehurst 30 January 2017