Irides: Weekly patent litigation update

The Irides Weekly Update is our round-up of patent litigation news highlights from around the world. Taking its name from the plural of “iris” - a nod to the ability of Irides to see what’s happening around the world.

Our latest edition - 28 July 2023 - is below:

UK

Court of Appeal finds Vernacare’s patent invalid on the basis of the Hallen v Brabantia principle

On 18 July 2023, the Court of Appeal handed down its judgment in Vernacare Limited v Moulded Fibre Products Limited [2023] EWCA Civ 841, an appeal from the decision of Nicholas Caddick (sitting as a Deputy High Court Judge). The Court of Appeal, with Sir Christopher Floyd giving the leading judgment, and Arnold LJ and King LJ in agreement, allowed the appeal, overturning the first instance decision and finding the patent at issue invalid.

First Instance Decision

The First Instance Decision, reported in Irides WU 36 2022 here addressed the validity of two of Vernacare Limited’s (“Vernacare”) patents, one of which was GB 2439947 (the “947 Patent”). At first instance, the 947 Patent was found valid, and infringement of this patent was admitted by Moulded Fibre Products Limited (“MFP”). The appeal related to the trial judge’s conclusion that the 947 Patent was valid.

The 947 Patent claims a mouldable paper pulp composition wherein the article is an open-topped washbowl comprising a detergent resistant binding agent which is a fluorocarbon, which is added to the paper pulp during the manufacturing process. Such washbowls are typically used in hospitals.

A prior art publication, termed Shimooka, discloses that a range of shaped articles, including tableware, can be made by moulding paper pulp and that if a fluorocarbon is added the articles will have enhanced water, oil and grease resistance. Shimooka says nothing about resistance to detergent.

The Judge decided that the inventive concept was that a detergent resistant washbowl can be made using a fluorocarbon agent in the composition from which it is made.

Applying Pozzoli [2007] EWCA Civ 588, the judge stated in relation to Shimooka that the skilled person would have no reason to think that the use of a fluorocarbon to make a food container resistant to water or oil may be relevant to the issue of making a detergent resistant washbowl from moulded paper pulp. There was therefore nothing in Shimooka which would have led the skilled person to try adding a fluorocarbon to the pulp mix as a means to address that issue.

The Appeal

In relation to the judge’s formulation of the inventive concept, MFP argued that the judge introduced an illegitimate purpose-based element into the claim. The consequence was that the judge’s construction wrongly excluded a detergent resistant washbowl which was made for reasons other than achieving detergent resistance.

MFP cited Hallen v Brabantia [1991] RPC 195 to support its argument that, if it was obvious to make an article fitting the description “washbowl” from a fluorocarbon containing pulp for the purposes of achieving oil and water resistance, then it was irrelevant that it was not obvious that detergent resistance would also be achieved. The skilled person carrying out Shimooka would do so in the expectation of obtaining an article with oil, water and grease resistance. It did not matter that Shimooka did not disclose the additional benefit of detergent resistance. Vernacare argued that such an approach was constructed artificially and with the benefit of hindsight.

The Court of Appeal concluded that the inventive concept of the 947 Patent is a washbowl made from paper pulp containing a fluorocarbon. By formulating the inventive concept as the appreciation that a detergent resistant washbowl can be made from pulp containing a fluorocarbon, rather than as a detergent resistant washbowl so made, the trial judge introduced an additional element into the claim in error. Properly construed, there was no requirement in the claim that the fluorocarbon be added for the purpose of conferring detergent resistance, or that the maker of the washbowl appreciates that the fluorocarbon is added for that purpose. The claim would be infringed whether or not the fluorocarbon was added for that purpose and whether or not the infringer appreciated that the consequence of adding the fluorocarbon was to achieve detergent resistance.

The relevant question under Pozzoli was therefore whether a washbowl made from paper pulp containing a fluorocarbon was obvious to a skilled but unimaginative person armed with Shimooka and the common general knowledge. It concluded that Shimooka provides good reasons for making a bowl which would, in fact, have all the requirements of the claims of the 947 Patent. Those reasons would have been apparent to the skilled person.

Therefore, the Court of Appeal found the 947 Patent invalid.

AUSTRALIA

Federal Court considers CRISPR patent appeal from Commissioner of Patents

On 24 July 2023, the Federal Court handed down its judgment in CRISPR patent dispute holding that none of the claims in ToolGen Inc.'s patent application for platform CRISPR technologies are valid. The Federal Court found that ToolGen's patent application lacked entitlement to the earliest priority date, lacked novelty and inventive step, and was not adequately supported by the specification, thereby upholding the findings of the Patent Office from the earlier opposition proceedings. [Decision here].

By way of background, ToolGen applied for a patent relating to compositions and methods involving a system for introducing a site-specific double-stranded break (or cleavage) at a target nucleic acid sequence in a eukaryotic cell comprising a nucleic acid encoding a Cas9 polypeptide and a nucleic acid encoding a guide RNA specific for the target DNA. The system disclosed in the patent application is referred to as a “Type II Clustered Regularly Interspaced Short Palindromic Repeats/Cas system” or “CRISPR/Cas system”. The patent application has 21 claims including independent claim 1 for a composition and independent claim 10 for a method. The CRISPR/Cas9 system described in the application can be used to edit target DNA sequences in eukaryotic cells so as to disable or modify gene expression through the deletion or insertion of such sequences using an RNA-guided endonuclease. The patent application was filed on 23 October 2013 and relies on an earliest priority date of 23 October 2012 based on a US Provisional Patent Application (“P1”). There were two other priority documents referred to in the patent application both being US Provisional Patent Applications P2 with a filing date of 20 March 2013 and P3 with a filing date of 20 June 2013.

The first respondent opposed the patent application before the Commissioner of Patents and was successful on the basis that the claims were not novel and did not involve an inventive step in circumstances where none of those claims was entitled to priority from P1. ToolGen appealed the Commissioner’s decision to the Federal Court.

The Federal Court conducted the appeal on the basis that if the claims were not entitled to priority from P1, then a later date of 20 June 2013 would apply. P1 was a relatively short document resembling a journal article and described the CRISPR/Cas9 system derived from Streptococcus pyogenes. However, P1 did not disclose certain aspects of ToolGen's claims, such as the use of DNA or viral RNA encoding a guide RNA, and the use of Cas9 proteins derived from bacterial species other than S. pyogenes.

The Federal Court considered that the patent application disclosed an invention involving "a nucleic acid encoding a guide RNA" sufficiently. However, the patent application did not include examples using CRISPR/Cas9 components from bacterial species other than Streptococcus pyogenes. Therefore, the patent application was deemed not to enable an invention involving a CRISPR/Cas9 system derived from another bacterial species without significant difficulty.

Three journal articles published after P1 but before the application were considered relevant to the issues of novelty and inventive step. The Federal Court concluded that P2 was also incapable of conferring priority on any claim in the application and P3 was filed after the publication date of the journal articles.

As a result, the Federal Court concluded that none of the claims are entitled to priority based on P1, all of the claims lack novelty and do not involve an inventive step, the complete specification does not provide an enabling disclosure of the invention and the claims are not supported by matter disclosed in the specification.

TAIWAN

Amendment to patent term extension legislation comes into effect  

On 1 July 2023, an amendment to the legislation governing the determination of patent term extensions in Taiwan came into effect. Under the amendment, the Taiwan Intellectual Property Office (“TIPO”) no longer needs to send the clinical trials list or the relevant documents and data submitted by the applicant to the Ministry of Health and Welfare (“MOHW”) for confirmation.

Under the previous examination practice, if an application for patent term extension was made based on domestic and/or foreign trials, TIPO was obliged to send the relevant documents to the MOHW to confirm whether the clinical trials are required to obtain market approval so as to determine the extension term. The amendment should therefore simplify the examination procedure for patent term extension applications.

UPC

UPC’s PPI to come into force for Austria and Court sees first settlement

On 28 July 2023, the Protocol on Privileges and Immunities (PPI) of the UPC will enter into force in Austria as reported by the Council of the EU.  The PPI will confer legal status on the Local Division of the Court allowing certain privileges and immunities by the Court and its property, judges and staff to ensure its proper functioning.  On 22 July 2023, AutoStore and Ocado announced a complete settlement of all claims between the companies in their global patent dispute which included three actions before the UPC.