Samsung Bioepis UK Ltd v Janssen Biotech, Inc.
[2024] EWHC 2442 (Pat)
Vernacare Limited v Moulded Fibre Products Limited
18 July 2023
[2023] EWCA Civ 841
Court of Appeal
Someone already knew how to make a water-resistant bowl from paper pulp. The patent for a detergent-resistant paper bowl was just a small step from that, and wasn’t inventive enough to deserve a patent. Also, the patent didn't clearly explain how much of the special ingredient to use.
Key Facts
- •Vernacare Limited (Vernacare) sued Moulded Fibre Products Limited (MFP) for patent infringement of GB Patent No. 2 439 947 (the 947 patent).
- •MFP argued that claims 1 and 9 of the 947 patent were invalid for lack of inventive step due to prior art in Japanese patent application No. JPH7-137726 (Shimooka).
- •The 947 patent concerns an open-topped, detergent-resistant washbowl made from moulded paper pulp with added fluorocarbon for detergent resistance.
- •Shimooka discloses making water and oil-resistant food containers from moulded paper pulp with added fluorocarbon.
- •The lower court found claims 1 and 9 valid.
Legal Principles
Inventive step assessment using the Pozzoli structured approach.
Pozzoli SPA v BDMO SA [2007] EWCA Civ 588
Obviousness test under Section 2 of the Patents Act 1977.
Patents Act 1977, Section 2
Inventive concept is synonymous with 'the invention' and should not be rewritten or have features imported.
Case law interpretation of Pozzoli test
An invention may be rendered obvious by a disclosure not articulating all its benefits (Hallen v Brabantia).
Hallen v Brabantia [1991] RPC 195
Outcomes
Appeal allowed; claims 1 and 9 of the 947 patent held invalid.
The court found that the lower court erred in its construction of the inventive concept and its assessment of obviousness. Shimooka, while not explicitly disclosing a detergent-resistant washbowl, rendered the invention obvious. The court also found Claim 9 to be invalid due to the lack of specification regarding the amount of fluorocarbon, and the lower court's failure to adequately address relevant expert evidence.