The claims arose in connection with the validity and alleged infringement of a European Patent on erythropoietin (‘EPO’).
Held: ‘Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance was addressed would have understood the author to be using the words to mean. Notice, however, that it is not, as is sometimes said, ‘the meaning of the words the author used’, but rather what the notional addressee would have understood the author to mean by using those words. The meaning of words is a matter of convention, governed by rules, which can be found in dictionaries and grammars. What the author would have been understood to mean by using those words is not simply a matter of rules. It is highly sensitive to the context of and background to the particular utterance. It depends not only upon the words the author has chosen but also upon the identity of the audience he is taken to have been addressing and the knowledge and assumptions which one attributes to that audience. ‘ The effect of article 69 is to give the claims what the European Patent Office has called a ‘central role’, and claims are no longer merely a point of departure but the decisive basis for determining the extent of protection. New technology is a situation in which the Protocol questions may be unhelpful, but if the claim can be construed in a way which is sufficiently general to include the new technology, the Protocol questions tend to answer themselves. The acts complained of were not infringing. What counts as a new product? It would be most unfortunate if the House upheld the validity of a patent which would on identical facts have been revoked in opposition proceedings. The patent was therefore invalid for anticipation. ‘Having invented a perfectly good and ground-breaking process for making EPO and its analogues, they were determined to try to patent the protein itself, notwithstanding that, even when isolated, it was not new. Hence the patenting of the two product-by-process claims which have failed, one because the last-minute amendment to distinguish the product from the natural EPO turned out to based upon the false premise that all uEPO had the same molecular weight and the other because the factual basis on which the European Patent Office allowed it turned out to be wrong.’
Lord Hoffmann: ‘No one has ever made an acontextual statement. There is always some context to any utterance, however meagre.’
The trial judge had cited Lord Hoffmann’s concept of a general principle of beneficial effect in Biogen. Lord Hoffmann commented: ‘This gave rise to a good deal of argument about what amounted to a ‘principle of general application’. In my opinion there is nothing difficult or mysterious about it. It simply means an element of the claim which is stated in general terms. Such a claim is sufficiently enabled if one can reasonably expect the invention to work with anything which falls within the general term. For example, in Genentech I/Polypeptide expression (T 292/85) [1989] OJ EPO 275, the patentee claimed in general terms a plasmid suitable for transforming a bacterial host which included an expression control sequence to enable the expression of exogenous DNA as a recoverable polypeptide. The patentee had obviously not tried the invention on every plasmid, every bacterial host or every sequence of exogenous DNA. But the Technical Board of Appeal found that the invention was fully enabled because it could reasonably be expected to work with any of them.’
Lord Hoffmann, Lord Hope of Craighead, Lord Rodger of Earlsferry, Lord Walker of Gestingthorpe, Lord Brown of Eaton-under-Heywood
[2004] UKHL 46, [2005] RPC 9, (2005) 28(7) IPD 28049, [2005] 1 All ER 667, [2005] RPC 169
House of Lords, Bailii
Protocol on the Interpretation of Article 69 of the European Patent Convention, Patents Act 1977
England and Wales
Citing:
Appeal from – Kirin Amgen Inc and others v Hoechst Marion Roussel Ltd and others CA 31-Jul-2002
The claimants sought damages for infringement of their patent. The defendants denied infringement, and sought a revocation of the patent.
Held: The patent concerned gene technology. Although an error had been made, the patent was valid, since . .
Cited – Biogen Plc v Medeva Plc HL 31-Oct-1996
The claim patented sought to protect a genetic molecule rather than a whole mouse namely that the molecule would, if inserted into a suitable host cell, cause the cell to make antigens of the Hepatitis B virus. A recombinant method of making the . .
Cited – British United Shoe Machinery Co Ltd v A Fussell and Sons Ltd CA 1908
In patent claims, the court emphasised the need to distinguish between the part of the specification in which the patentee discharged his duty to disclose the best way of performing the invention and the section which delimited the scope of the . .
Cited – Electric and Musical Industries Ltd v Lissen Ltd HL 1938
The House described the status of patent claims: ‘The function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundary of the area within which they will be trespassers. Their primary . .
Cited – Catnic Components Ltd and Another v Hill and Smith Ltd HL 1982
The plaintiffs had been established as market leaders with their patented construction, had ample production capacity and stocks, but had never granted any licence under their patent. The patent was for a novel type of galvanised steel lintel, which . .
Cited – Prenn v Simmonds HL 1971
Backgroun Used to Construe Commercial Contract
Commercial contracts are to be construed in the light of all the background information which could reasonably have been expected to have been available to the parties in order to ascertain what would objectively have been understood to be their . .
Cited – Reardon Smith Line Ltd v Yngvar Hansen-Tangen (The ‘Diana Prosperity’) HL 1976
In construing a contract, three principles can be found. The contextual scene is always relevant. Secondly, what is admissible as a matter of the rules of evidence under this heading is what is arguably relevant, but admissibility is not decisive. . .
Cited – Investors Compensation Scheme Ltd v West Bromwich Building Society HL 19-Jun-1997
Account taken of circumstances wihout ambiguity
The respondent gave advice on home income plans. The individual claimants had assigned their initial claims to the scheme, but later sought also to have their mortgages in favour of the respondent set aside.
Held: Investors having once . .
Cited – Mannai Investment Co Ltd v Eagle Star Assurance HL 21-May-1997
Minor Irregularity in Break Notice Not Fatal
Leases contained clauses allowing the tenant to break the lease by serving not less than six months notice to expire on the third anniversary of the commencement date of the term of the lease. The tenant gave notice to determine the leases on 12th . .
Cited – Antaios Compania Naviera SA v Salen Rederierna AB (‘the Antaios’) HL 1984
A ship charterer discovered that the bills of lading were incorrect, but delayed withdrawal from the charter for 13 days. They now sought leave to appeal the arbitration award against them.
Held: Though he deprecated extending the use of the . .
Doubted in part – Rockwater Ltd v Technip France Sa (Formerly Coflexip Sa), Technip Offshore UK Limited (Formerly Coflexip Stena Offshore Limited) CA 1-Apr-2004
. .
Cited – Clark v Adie HL 1877
The court should look to the ‘pith and marrow’ of the invention to see whether a patent infringement had occurred. For a claim be made for a ‘subordinate’ invention, it would have been necessary distinctly to claim it in the patent. . .
Cited – C Van Der Lely NV v Bamfords Ltd HL 1963
The pith and marrow doctrine on the construction of patents claims was ‘necessary to prevent sharp practice.’ As to the doctrine of enablement as explained by Lord Westbury: ‘Lord Westbury must have meant experiments with a view to discovering . .
Cited – Improver Corporation v Remington Consumer Products Ltd ChD 1989
Protocol Tests For Onbviousness Set Out
The invention was based upon the discovery that an arcuate rod with slits, when rotated at high speed, would take the hair off the skin by means of the opening and closing of the slits. The claim was to a rod in the form of an ‘helical spring’ but . .
Cited – PLG Research Ltd and Another v Ardon International Ltd and Others ChD 25-Nov-1994
A patent infingement claim was met by the assertion that the material covered had been disclosed before the patent had been obtained. The court was asked as to the test of whether the information in a claim had been disclosed. Aldous J said: ‘Mr. . .
Cited – Southco Inc v Dzus Fastener Europe Ltd 1992
. .
Cited – PLG Research Ltd and Another v Ardon International Ltd and Others CA 1995
As to Catnic: ‘Lord Diplock was expounding the common law approach to the construction of a patent. This has been replaced by the approach laid down by the Protocol. If the two approaches are the same, reference to Lord Diplock’s formulation is . .
Cited – Assidoman Multipack Ltd v The Mead Corporation 1995
In patents law, the Catnic approach accords with the Protocol. . .
Cited – Wheatley, Bortec Limited v Drillsafe Limited, Force Group Services Plc, Foster, Foster, Carter, Davies CA 25-Jul-2000
In a claim for infringement of a patent, where variations on a patent were to be considered, the court should look to the three tests set down in Improver (‘the Protocal questions’), and the claim should be interpreted in a purposive and contextual . .
Cited – Genentech’s (Human Growth Hormone) Patent ChD 1987
The applicant sought a patent for a hormone: ‘It is trite law that you cannot patent a discovery, but if on the basis of that discovery you can tell people how it can be usefully employed, then a patentable invention may result. This in my view . .
Cited – Genentech’s (Human Growth Hormone) Patent CA 1989
A patent claim for an important protein called Tissue Plasminogen Activator was objected to on the basis of the obviousness of the gene sequence.
Held: The court considered the categories of exclusion in the context of what was said to be a . .
Cited – American Home Products Corporation, Professor Roy Calne v Novartis Pharmaceuticals UK Limited ChD 2000
A patent was granted for a product, produced by the bacterium streptomyces hygroscopicus, called rapamycin, which was useful to suppress transplant rejection. Because rapamycin was a known product at the priority date, it could not be patented: . .
Cited – American Home Products Corporation, Professor Roy Calne v Novartis Pharmaceuticals UK Limited, Novartis Pharma AG CA 27-Jul-2000
The invention was a second medical use for a known drug rapamycin, which was found to have an immuno-suppressive effect. The court asked whether a claim to rapamycin should be construed to include derivatives.
Held: A person skilled in the art . .
Cited – Regina v Secretary of State for Health ex parte Quintavalle (on behalf of Pro-Life Alliance) HL 13-Mar-2003
Court to seek and Apply Parliamentary Intention
The appellant challenged the practice of permitting cell nuclear replacement (CNR), saying it was either outside the scope of the Act, or was for a purpose which could not be licensed under the Act.
Held: The challenge failed. The court was to . .
Cited – Merrell Dow Pharmaceuticals Inc and Another v H N Norton and Co Ltd; Same v Penn Etc HL 26-Oct-1995
A patent for a substance which had been produced naturally before the application of the process was invalid. The patent was invalidated after the discovery that the effect was produced naturally from an acid metabolite. Patent infringement does not . .
Cited – International Flavors and Fragrances Inc EPO 1984
A patentee who wishes to complain of dealings in a product made by his patented process must rely on his process claim and article 64(2). The United Kingdom is the only Member State of the EPC which accepted product-by-process claims. The EPO will . .
Cited – British Thomson-Houston Company Ltd v Corona Lamp Works Ltd HL 1922
The claim required the filament of tungsten used in the lamp to be ‘of large diameter’. The Court of Appeal had accepted that the word ‘large’ was ambiguous in that it did not enable the skilled person to decide when the claim was infringed.
Cited – Genentech I/Polypeptide expression EPO 1989
The patentee claimed in general terms a plasmid suitable for transforming a bacterial host which included an expression control sequence to enable the expression of exogenous DNA as a recoverable polypeptide. The patentee had obviously not tried the . .
At First Instance – Hoechst Marion Roussel Ltd and others v Kirin-Amgen Inc and others PatC 21-Mar-2002
A claim was made on the one hand for a patent infringement, and on the other it was challenged. The patent related to recombinant erythropoietin.
Held: The claim 19 was invalid (for insufficiency) but that claim 26 was valid and infringed. . .
Cited by:
Cited – Debenhams Retail Plc and Another v Sun Alliance and London Assurance Company Ltd CA 20-Jul-2005
The landlord appealed against a decision that VAT was not to be included when calculating a rent based upon the turnover in the premises, when it had been expressed to include purchase taxes.
Held: The appeal succeeded: ‘it would be wrong to . .
Cited – Synthon Bv v Smithkline Beecham Plc HL 20-Oct-2005
Synthon filed an international application for a patent. Before it was published, SB filed a similar application in the UK patents registry. Synthon had applied for the UK patent granted to SB to be revoked. Jacob J had found that the reader of the . .
Cited – W L Gore and Associates Gmbh v Geox Spa PatC 7-Oct-2008
The claimants sought a declaration of non-infringement of four patents relating to waterproof fabrics for shoes.
Held: The patents could not be set as invalid for obviousness. . .
Cited – Generics (UK) Ltd and others v H Lundbeck A/S HL 25-Feb-2009
Patent properly granted
The House considered the patentability of a chemical product, citalopram made up of two enantiomers, as opposed to the process of its creation, questioning whether it could be new or was insufficient within the 1977 Act.
Held: The appeal . .
Cited – Chartbrook Ltd v Persimmon Homes Ltd and Others HL 1-Jul-2009
Mutual Knowledge admissible to construe contract
The parties had entered into a development contract in respect of a site in Wandsworth, under which balancing compensation was to be paid. They disagreed as to its calculation. Persimmon sought rectification to reflect the negotiations.
Held: . .
Cited – Occlutech Gmbh v Aga Medical Corp ChD 31-Jul-2009
The claimants sought a declaration of non-infringement of patents involving medial devices. The patent owner claimed infringement and the claimant also sought revocation of the patent for obviousness.
Held: The device did not infringe the . .
Cited – Pink Floyd Music Ltd and Another v EMI Records Ltd CA 14-Dec-2010
The defendant appealed against an order made on the claimant’s assertion that there were due to it substantial underpayments of royalties over many years. The issues were as to the construction of licensing agreements particularly in the context of . .
Cited – Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd CA 22-Oct-2009
. .
Cited – Marley v Rawlings and Another SC 22-Jan-2014
A husband and wife had each executed the will which had been prepared for the other, owing to an oversight on the part of their solicitor; the question which arose was whether the will of the husband, who died after his wife, was valid. The parties . .
Cited – Trump International Golf Club Scotland Ltd and Another v The Scottish Ministers (Scotland) SC 16-Dec-2015
The appellant challenged the grant of permission to the erection of wind turbines within sight of its golf course.
Held: The appeal failed. The challenge under section 36 was supported neither by the language or structure of the 1989 Act, and . .
Cited – Eli Lilly v Actavis UK Ltd and Others SC 12-Jul-2017
The issue raised on this appeal and cross-appeal is whether three products manufactured by Actavis would infringe a patent whose proprietor is Lilly, namely European Patent (UK) No 1 313 508, and its corresponding designations in France, Italy and . .
Cited – Regeneron Pharmaceuticals Inc v Kymab Ltd SC 24-Jun-2020
SC Kymab Ltd (‘Kymab’) alleges that the relevant patents are invalid for insufficiency because they did not enable the ordinary skilled person to work the claimed invention across the breadth of the claims. The . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Contract
Leading Case
Updated: 01 November 2021; Ref: scu.218712