COMBINATION NON-OBVIOUS; A FLOOR IN THE ARGUMENT

When combination patent claims are obvious or insufficient

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

Back in 1997 Norbrook applied to patent some improvements in long-acting antimicrobials. Its invention was for a veterinary medicine that combined two active ingredients, an anti-microbial and an anti-inflammatory. This combination could treat various infectious diseases in animals, including bovine respiratory disease (BRD). When the application was filed there were only a few combination products on the market for veterinary products; Schering-Plough had however been peddling its Finabiotic combination antibiotic and anti-inflammatory product ever since 1986. Claim 1 of Norbrook's patent was for any long-acting anti-microbial, together with an anti-inflammatory selected from cited classes which included flunixin and Claim 5 was for any long-acting anti-microbial with flunixin. Claim 6 was for long-acting oxytetracycline and flunixin while Claim 7 covered a particular strength of long-acting oxytetracycline together with a standard dose of flunixin. Schering-Plough sought to revoke Norbrook's patent, maintaining that it was obvious over common general knowledge and that it was void for insufficiency (since the invention as disclosed would not enable the person skilled in the art to make it). An attempt by Norbrook to amend its patent in the light of the insufficiency allegation had already failed.


In these proceedings Schering-Plough pressed its obviousness claim and argued, regarding insufficiency, that once a patentee had responded to an allegation of insufficiency by trying to amend his claims, the burden of proof then shifted to him to disprove insufficiency. In any event, Schering-Plough submitted that the wide claims of the patent could not be justified on the basis of the disclosure as contained in the patent.

Christopher Floyd QC ruled as follows:

* Claim 1 was not void for obviousness. The basic inventive concept was the use of a long-acting anti-microbial and anti-inflammatory in a combination drug. It was implicit in the inventive concept in that claim that the long-acting effect of the anti-microbial was retained in the combination product. The invention was not just the idea of the combination product, but an actual combination product which retained the long-acting effect of the long-acting anti-microbrial. The idea of combining a long acting anti-microbial such as oxytetracycline with an anti-inflammatory such as flunixin was one which would occur to a skilled team without invention, so the inventive concept of claim 1 did involve an inventive step when compared with common general knowledge.

* The burden of proof did not shift to the patentee to disprove insufficiency merely by reason of his amending his claims.

* While claims 1 and 5 were invalid for insufficiency, claims 6 and 7 were valid. It was inconceivable that all the combinations falling within claims 1 and 5 could be made to work without putting a good deal of research or experiment into finding out how to make them work.

The IPKat agrees. Combinations often seem non-inventive in hindsight and it's good to see the court taking a sympathetic approach towards them.


A floor in the rgument: no delivery up in 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 floor panels made of a hard material. Its inventive concept embodied was that the panels could be snapped together without the need to turn them. IMC was a flooring importer and supplier. In a previous action, Unilin sued IMC and others for patent infringement, obtaining injunctive relief. Subsequently IMC began to import a different flooring product in the belief that theit did not infringe Unilin's patent. Unilin, alleging patent infringement, sought an order for delivery up of all flooring material which would infringe the patent.

Unilin said it was obvious that the new product was just as much of an infringement as the previous flooring. IMC denied infringement and submitted that the balance of convenience against granting the order was in its favour. IMC also argued that the fact that its new product could be snapped together if enough force was applied, such as by using a hammer, as a result of the elastic quality of the material, did not amount to an infringement of the patent.

Lewison J dismissed Unilin's application. While there was a serious issue to be tried, there was also an arguable defence. It would therefore be open to IMC to re-run the possibility of an attack on the patent’s validity. Further, the balance of convenience was indeed in IMC's favour.

Left: a device for finding the balance of convenience.

The IPKat finds these little snippets tantalising because they are always so incomplete. What ARE the circumstances that result in the balance of convenience being in the defendant's favour? And can we assume that Unilin was seeking delivery up as an interim measure (which doesn't seem to happen much)? Or was it really an application for summary judgment?