K = Na. Is the genie out of the bottle? PART 2
This is part 2 of the report on "K = Na. Is the genie out of the bottle?" This report covers numerical limits in claims, relevance of the file history, harmonisation, and a vote as to whether the decision in Actavis v Eli Lilly has improved the law.
Claims with numerical limits
Sir Robin Jacob continued with a question for the panel submitted by a patent attorney: Do claims that contain numerical limits restrict the extent of protection, or under the DoE, do they now cover anything that works?
Lord Neuberger explained that he had got close to considering this question when considering an application for permission to appeal in Smith & Nephew v Convatech [2012] EWCA Civ 1638, although the case settled before it was decided upon by the Supreme Court. The Court of Appeal had found that there was infringement, even though the amount of silver in the infringing product was higher than that specified in the claims. There is an argument that where a patentee has defined their monopoly in a claim by 'book-ending' a range with two numerical limits, the patentee does not intend to go beyond that specified range. However, although that might be persuasive, one also needs to read the claims in the context of the specification which might indicate otherwise. Lord Sumption observed that the issue of numerical limitations would be considered by the Court in the context of question 3 of the Actavis v Eli Lilly questions - the parties may have deliberately indicated a range with precision.
Judge O'Malley explained that typically there is a very good reason why a patentee has specified numerical limitations - to avoid prior art. She suspected that this is why she does not see many DoE cases involving numerical limitations, but there are exceptions, and the DoE could extend a claim slightly beyond numerical limits, provided there is no prior art issue. Claims are often drafted as "approximately X", thereby giving the Court the ability to analyse the issue more broadly.
Judge Kalden recalled a recent difficult case about emulsion, where there was a numerical limitation about particle size in the claims. The size specified in the claims was said to be an 'average' size, and some particles in the infringing product were outside that range - the Dutch Court found infringement on the basis of the DoE. As a general rule, it is difficult to sustain arguments about the DoE on numerical limitations, but there are exceptions.
From a German perspective, Judge Meier-Beck recognised that the DoE has a very narrow role in claims with numerical ranges, but it is not excluded.
What role should the file history have in the DoE, and should examination of the file history be confined to the patent office of the jurisdiction in question?
Judge Meier-Beck said that he subscribes to the view that life is too short to look at the file history, certainly the worldwide file history!
Lord Sumption stated that the English position is clear - the prosecution history is only referred to in exceptional circumstances [Merpel - are those exceptional circumstances clear?].
Judge O' Malley confirmed that in the US, Courts look only to the file history of the US patent office, not other jurisdictions. In the Actavis v Eli Lilly case, the US Court would not have been able to say that the examiner was wrong to insist on a limitation to pemetrexed disodium. In the US, if the examiner requires a limitation, you have the choice to either challenge that decision of the examiner at the relevant time, or accept the limitation. If you accept the limitation, you have to live with that limitation. The Actavis case would have been pretty clear in the US - the argument on equivalents would not have survived the prosecution file history estoppel.
There was agreement from members of the panel that the examiner in the pemetrexed case had got it wrong - disodium was only an example of a way to perform the inventive concept and the limitation to disodium was too restrictive.
Is it possible to harmonise European patent law? Or is harmonisation a chimera?
Judge Kalden said that we do not have the UPC at the present time, but harmonistaion has been achieved to a great extent. The UK Supreme Court decision in Actavis is a good example of a further step in this harmonisation process, and is a welcome development. Different decisions from different Courts often turn on the evidence, sometimes on the procedural rules (which may not be desirable, but is nevertheless what happens), and also on an appreciation of the facts in the case. Judges are human and the way in which they interpret evidence will be different (indeed courts in one jurisdiction will have different opinions - which was why we were all at the event in the first place). The European Courts are doing very well at present in terms of harmonisation.
Judge Meier-Beck confirmed that the Actavis decision from his perspective is an important step in harmonising law on Article 69 of the EPC.
THE VOTE - has the decision in Actavis v Eli Lilly improved the law?
Sir Robin first asked lawyers in the audience to respond with a show of hands - has the decision in Actavis v Eli Lilly improved the law? It seemed to the author that a small but significant majority of lawyers attending think that the decision has not improved the law (although there were many abstainers). Next, Sir Robin asked patent attorneys in the audience to respond to the same question - here, a more sizeable majority thought that the decision has not improved the law.
Sir Robin rounded the event off by giving Lord Neuberger a speech to mark his retirement from the UK Supreme Court. The author notes that this marks the end of an era for Lord Neuberger, but the beginning of another for UK patent practitioners.
Postscript: a film of the event can be found here.
Claims with numerical limits
Sir Robin Jacob continued with a question for the panel submitted by a patent attorney: Do claims that contain numerical limits restrict the extent of protection, or under the DoE, do they now cover anything that works?
Lord Neuberger explained that he had got close to considering this question when considering an application for permission to appeal in Smith & Nephew v Convatech [2012] EWCA Civ 1638, although the case settled before it was decided upon by the Supreme Court. The Court of Appeal had found that there was infringement, even though the amount of silver in the infringing product was higher than that specified in the claims. There is an argument that where a patentee has defined their monopoly in a claim by 'book-ending' a range with two numerical limits, the patentee does not intend to go beyond that specified range. However, although that might be persuasive, one also needs to read the claims in the context of the specification which might indicate otherwise. Lord Sumption observed that the issue of numerical limitations would be considered by the Court in the context of question 3 of the Actavis v Eli Lilly questions - the parties may have deliberately indicated a range with precision.
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Judge Kate O'Malley, US Court of Appeals for the Federal Circuit. |
Judge Kalden recalled a recent difficult case about emulsion, where there was a numerical limitation about particle size in the claims. The size specified in the claims was said to be an 'average' size, and some particles in the infringing product were outside that range - the Dutch Court found infringement on the basis of the DoE. As a general rule, it is difficult to sustain arguments about the DoE on numerical limitations, but there are exceptions.
From a German perspective, Judge Meier-Beck recognised that the DoE has a very narrow role in claims with numerical ranges, but it is not excluded.
What role should the file history have in the DoE, and should examination of the file history be confined to the patent office of the jurisdiction in question?
Judge Meier-Beck said that he subscribes to the view that life is too short to look at the file history, certainly the worldwide file history!
Lord Sumption stated that the English position is clear - the prosecution history is only referred to in exceptional circumstances [Merpel - are those exceptional circumstances clear?].
Judge O' Malley confirmed that in the US, Courts look only to the file history of the US patent office, not other jurisdictions. In the Actavis v Eli Lilly case, the US Court would not have been able to say that the examiner was wrong to insist on a limitation to pemetrexed disodium. In the US, if the examiner requires a limitation, you have the choice to either challenge that decision of the examiner at the relevant time, or accept the limitation. If you accept the limitation, you have to live with that limitation. The Actavis case would have been pretty clear in the US - the argument on equivalents would not have survived the prosecution file history estoppel.
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| Lord Neuberger |
Is it possible to harmonise European patent law? Or is harmonisation a chimera?
Judge Kalden said that we do not have the UPC at the present time, but harmonistaion has been achieved to a great extent. The UK Supreme Court decision in Actavis is a good example of a further step in this harmonisation process, and is a welcome development. Different decisions from different Courts often turn on the evidence, sometimes on the procedural rules (which may not be desirable, but is nevertheless what happens), and also on an appreciation of the facts in the case. Judges are human and the way in which they interpret evidence will be different (indeed courts in one jurisdiction will have different opinions - which was why we were all at the event in the first place). The European Courts are doing very well at present in terms of harmonisation.
Judge Meier-Beck confirmed that the Actavis decision from his perspective is an important step in harmonising law on Article 69 of the EPC.
THE VOTE - has the decision in Actavis v Eli Lilly improved the law?
Sir Robin first asked lawyers in the audience to respond with a show of hands - has the decision in Actavis v Eli Lilly improved the law? It seemed to the author that a small but significant majority of lawyers attending think that the decision has not improved the law (although there were many abstainers). Next, Sir Robin asked patent attorneys in the audience to respond to the same question - here, a more sizeable majority thought that the decision has not improved the law.
Sir Robin rounded the event off by giving Lord Neuberger a speech to mark his retirement from the UK Supreme Court. The author notes that this marks the end of an era for Lord Neuberger, but the beginning of another for UK patent practitioners.
Postscript: a film of the event can be found here.
