Medimmune v Novartis & Anor and Novartis v Medimmune & Anor, Court of Appeal, London, UK, 10 October 2012, Case no. [2012] EWCA Civ 1234
This is a joint appeal relating to Medimmune's and MRC's jointly held patents for phage display technology:
1. In action HC09C04770 MedImmune Limited (“MedImmune”), alleged Novartis Pharmaceuticals UK Limited (“Novartis”) had infringed European Patents (UK) Nos. 0 774 511 and 2 055 777 by selling a product called ranibizumab which is used for the treatment of wet age-related macular degeneration of the eye. Novartis disputed infringement and counterclaimed for revocation of the patents. The judge held at first instance that both patents were invalid on the grounds of obviousness and because the claims were not entitled to priority from the relevant priority document, it being conceded that if they were not entitled to priority then the patents were invalid. Novartis disputed infringement and counterclaimed for revocation of the patents. The judge held at first instance that both patents were invalid on the grounds of obviousness and because the claims were not entitled to priority from the relevant priority document. The appeal was persued only in respect of the '777 patent.
This is a joint appeal relating to Medimmune's and MRC's jointly held patents for phage display technology:
1. In action HC09C04770 MedImmune Limited (“MedImmune”), alleged Novartis Pharmaceuticals UK Limited (“Novartis”) had infringed European Patents (UK) Nos. 0 774 511 and 2 055 777 by selling a product called ranibizumab which is used for the treatment of wet age-related macular degeneration of the eye. Novartis disputed infringement and counterclaimed for revocation of the patents. The judge held at first instance that both patents were invalid on the grounds of obviousness and because the claims were not entitled to priority from the relevant priority document, it being conceded that if they were not entitled to priority then the patents were invalid. Novartis disputed infringement and counterclaimed for revocation of the patents. The judge held at first instance that both patents were invalid on the grounds of obviousness and because the claims were not entitled to priority from the relevant priority document. The appeal was persued only in respect of the '777 patent.
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2. In action HC11C01304, Novartis sought a declaration that a Supplementary Protection Certificate (“the SPC”) granted in respect of the '777 patent was invalid. It necessarily followed from the judge’s findings in the first action that the SPC was invalid but the judge held that even on the hypothesis that his earlier findings were wrong, the SPC was nonetheless invalid because it was granted in respect of a product which was not identified in the wording of the relevant claim as a product deriving from the process in question. MedImmune appealed finding that the SPC was invalid.
The appeal against the validity decision on the '777 patent has failed and therefore the second appeal relating to the SPC is not addressed.
An interesting point in this decision is that Lewison LJ adds to the leading judgment of Kitchin LJ with a substantive judgment on the issue of obviousness. The judge stresses that sub-tests or paraphrases for assessing obviousness are not a substitute for the statutory question of asking whether an invention is obvious (Article 56 EPC): “…at bottom the question is simply whether the invention is obvious. Any paraphrase or other test is only an aid to answering the statutory question.” This is particularly true of the "obvious to try" sub-test and Johns-Manville Corporation’s Patent [1967] RPC 479, which is the starting point in domestic law of the idea of obvious to try, is quoted:
“I have endeavoured to refrain from coining a definition of “obviousness” which counsel may be tempted to cite in subsequent cases relating to different types of claims. Patent law can too easily be bedevilled by linguistics and the citation of a plethora of cases about other inventions of different kinds. 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 cautions that "These sentiments seem to have been largely ignored by the profession. It cannot be said too often that the statutory question is: was the invention obvious at the priority date? It is not: was it obvious to try? In my judgment too much elaboration of the statutory question has been attached to it. The questions of the degree of expectation of success and the length of time thought to be needed to undertake a trial have taken on lives of their own. I think that this happened in our case. Obviousness is to be assessed according to Kitchin J (as he then was) in Lundbeck [2007] EWHC 1040 (Pat):
“The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.”
Read the decision (in English) here.
Head note: Paul England
2. In action HC11C01304, Novartis sought a declaration that a Supplementary Protection Certificate (“the SPC”) granted in respect of the '777 patent was invalid. It necessarily followed from the judge’s findings in the first action that the SPC was invalid but the judge held that even on the hypothesis that his earlier findings were wrong, the SPC was nonetheless invalid because it was granted in respect of a product which was not identified in the wording of the relevant claim as a product deriving from the process in question. MedImmune appealed finding that the SPC was invalid.
The appeal against the validity decision on the '777 patent has failed and therefore the second appeal relating to the SPC is not addressed.
An interesting point in this decision is that Lewison LJ adds to the leading judgment of Kitchin LJ with a substantive judgment on the issue of obviousness. The judge stresses that sub-tests or paraphrases for assessing obviousness are not a substitute for the statutory question of asking whether an invention is obvious (Article 56 EPC): “…at bottom the question is simply whether the invention is obvious. Any paraphrase or other test is only an aid to answering the statutory question.” This is particularly true of the "obvious to try" sub-test and Johns-Manville Corporation’s Patent [1967] RPC 479, which is the starting point in domestic law of the idea of obvious to try, is quoted:
“I have endeavoured to refrain from coining a definition of “obviousness” which counsel may be tempted to cite in subsequent cases relating to different types of claims. Patent law can too easily be bedevilled by linguistics and the citation of a plethora of cases about other inventions of different kinds. 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 cautions that "These sentiments seem to have been largely ignored by the profession. It cannot be said too often that the statutory question is: was the invention obvious at the priority date? It is not: was it obvious to try? In my judgment too much elaboration of the statutory question has been attached to it. The questions of the degree of expectation of success and the length of time thought to be needed to undertake a trial have taken on lives of their own. I think that this happened in our case. Obviousness is to be assessed according to Kitchin J (as he then was) in Lundbeck [2007] EWHC 1040 (Pat):
“The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.”
Read the decision (in English) here.
Head note: Paul England
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