Combination Non-Obvious; A Flooring Inwards The Argument

When combination patent claims are obvious or insufficient

This patent case, decided on Fri yesteryear Deputy Patents Court estimate Christopher Floyd QC, was institute yesteryear the IPKat on BAILII: it's Schering-Plough Ltd v Norbrook Laboratories Ltd [2005] EWHC 2532 (CH).

Back inwards 1997 Norbrook applied to patent to a greater extent than or less improvements inwards long-acting antimicrobials. Its innovation was for a veterinarian medicine that combined ii active ingredients, an anti-microbial too an anti-inflammatory. This combination could process diverse infectious diseases inwards animals, including bovine respiratory affliction (BRD). When the application was filed at that topographic point were solely a few combination products on the marketplace for veterinarian products; Schering-Plough had notwithstanding been peddling its Finabiotic combination antibiotic too anti-inflammatory production ever since 1986. Claim 1 of Norbrook's patent was for whatever long-acting anti-microbial, together amongst an anti-inflammatory selected from cited classes which included flunixin too Claim v was for whatever long-acting anti-microbial amongst flunixin. Claim half dozen was for long-acting oxytetracycline too flunixin spell Claim seven covered a item strength of long-acting oxytetracycline together amongst a measure dose of flunixin. Schering-Plough sought to revoke Norbrook's patent, maintaining that it was obvious over mutual full general cognition too that it was void for insufficiency (since the innovation every bit disclosed would non enable the somebody skilled inwards the fine art to brand it). An effort yesteryear Norbrook to amend its patent inwards the low-cal of the insufficiency allegation had already failed.


In these proceedings Schering-Plough pressed its obviousness claim too argued, regarding insufficiency, that in i lawsuit a patentee had responded to an allegation of insufficiency yesteryear trying to amend his claims, the burden of proof so shifted to him to disprove insufficiency. In whatever event, Schering-Plough submitted that the broad claims of the patent could non live justified on the ground of the disclosure every bit contained inwards the patent.

Christopher Floyd QC ruled every bit follows:

* Claim 1 was non void for obviousness. The basic inventive concept was the role of a long-acting anti-microbial too anti-inflammatory inwards a combination drug. It was implicit inwards the inventive concept inwards that claim that the long-acting number of the anti-microbial was retained inwards the combination product. The innovation was non exactly the stance of the combination product, but an actual combination production which retained the long-acting number of the long-acting anti-microbrial. The stance of combining a long acting anti-microbial such every bit oxytetracycline amongst an anti-inflammatory such every bit flunixin was i which would occur to a skilled squad without invention, so the inventive concept of claim 1 did involve an inventive pace when compared amongst mutual full general knowledge.

* The burden of proof did not shift to the patentee to disprove insufficiency simply yesteryear ground of his amending his claims.

* While claims 1 too v were invalid for insufficiency, claims half dozen too seven were valid. It was inconceivable that all the combinations falling inside claims 1 too v could live made to function without putting a expert bargain of inquiry or experiment into finding out how to brand them work.

agrees. Combinations oft look non-inventive inwards hindsight too it's expert to run across the courtroom taking a sympathetic approach towards them.


A flooring inwards the rgument: no delivery upward inwards patent proceedings

On the same day, Mr Justice Lewison produced this Patents Court decision, noted on the Butterworths All England Direct Service: Unilin Beheer BV v Information Management Consultancy Ltd.

Unilin owned a patent for a method of connecting flooring panels made of a difficult material. Its inventive concept embodied was that the panels could live snapped together without the ask to plough them. IMC was a flooring importer too supplier. In a previous action, Unilin sued IMC too others for patent infringement, obtaining injunctive relief. Subsequently IMC began to import a dissimilar flooring production inwards the belief that theit did non infringe Unilin's patent. Unilin, alleging patent infringement, sought an lodge for delivery upward of all flooring cloth which would infringe the patent.

Unilin said it was obvious that the novel production was exactly every bit much of an infringement every bit the previous flooring. IMC denied infringement too submitted that the remainder of convenience against granting the lodge was inwards its favour. IMC every bit good argued that the fact that its novel production could live snapped together if plenty strength was applied, such every bit yesteryear using a hammer, every bit a final result of the elastic lineament of the material, did non amount to an infringement of the patent.

Lewison J dismissed Unilin's application. While at that topographic point was a serious number to live tried, at that topographic point was every bit good an arguable defence. It would so live opened upward to IMC to re-run the possibility of an laid on on the patent’s validity. Further, the remainder of convenience was indeed inwards IMC's favour.

Left: a device for finding the remainder of convenience.

finds these picayune snippets tantalising because they are e'er so incomplete. What ARE the circumstances that final result inwards the remainder of convenience beingness inwards the defendant's favour? And tin nosotros assume that Unilin was seeking delivery upward every bit an interim mensurate (which doesn't look to hap much)? Or was it actually an application for summary judgment?