Sandoz AG & Ors v Biogen MA Inc
[2024] EWHC 2567 (Pat)
Advanced Cell Diagnostics, Inc v Molecular Instruments, Inc
23 April 2024
[2024] EWHC 898 (Pat)
High Court
ACD sued MI for copying its invention for detecting things in cells. The judge said ACD's invention wasn't new enough because it was an obvious combination of existing ideas. Even if it had been new, the judge said MI didn't do anything wrong in the UK.
Key Facts
- •ACD alleged MI infringed European Patents EP572 and EP439, concerning in situ detection of nucleic acids.
- •MI counterclaimed for revocation of both patents.
- •The patents share the same priority date (20 June 2005) and specifications.
- •MI denied infringement, arguing its products and methods did not fall within the patent claims and that it did not perform infringing acts in the UK.
- •ACD argued MI was jointly liable with its customers for importation and use.
- •The case involved extensive expert evidence and analysis of experimental data.
- •The central issue in the obviousness arguments revolved around the common general knowledge (CGK) and the skilled person's mindset towards transferring in vitro techniques to in situ applications.
Legal Principles
To establish accessory liability in tort, it's insufficient to show the defendant facilitated the primary tortfeasor's actions. Joint liability requires proof of furtherance of the tort and a common design.
Fish & Fish Ltd. v. Sea Shepherd UK [2015] UKSC 10
The skilled person will share common prejudices or conservatism prevailing in the art.
Rockwater v Technip [2004] EWCA Civ 381
Obviousness assessment considers whether the skilled person, upon reading the prior art, would find the invention obvious and have reasonable prospects of success.
Actavis v. ICOS [2019] UKSC
For anticipation, there must be clear and unmistakable directions in the prior art that, if followed, would inevitably result in something falling within the patent claims.
Terrell on the Law of Patents
Outcomes
Patents invalid for obviousness over Collins with Kern.
The skilled person would have reasonable prospects of success in combining the teachings of Collins and Kern to create the patented invention. A prejudice against transferring in vitro techniques to in situ applications was not established, and the prior art provided motivation to try the combination.
Anticipation claims fail.
Collins, alone or with Kern, did not provide a clear and unmistakable disclosure of all the claimed features.
Obviousness attack over Player fails.
Cruciform probes were not considered common general knowledge (CGK), and Player provided no suggestion of their use.
If the patents were valid, EP572 would have been infringed (but not EP439).
MI's "troubleshooting" assistance to customers constituted joint liability for infringement, given a common design to achieve the infringing method.