The Alleged Infringement Conduct by Sharon - Essay Example

1- The identification of the inventive concept By looking at the beginning of claim 1 and to the '' process for the manufacture of a cream for the treatment of human tissue ….'' And applying Dyson v Hoover and Unilever v Chefaro, We conclude from the claims as a whole that the epitome and the essence of the invention is '' process of extract heselinol for treatment product '', accordingly, and according to lord Hoffmann in Biogen inc v Medeva plc the problem is how to manufacture the cream for treatment of human tissue from the heseltionl found in the vegetable. 2- The skilled addressee By considering how much the sophistication of the invention, it could be decided who the skilled addressee is, the standard point by which he can when he read the alleged infringement claims of Hackney can decide objectively ( Lilly Lcose Ltd v Pfizer ltd) whether there is an infringement objectively by the Sharon. The degree of qualification of the skilled addressee is depending on the field of Hckney's patent and the field of their invention here I don’t think it is sophisticated technology Dyson v Hoover according to the facts of the question so the skilled addressee would be a bachelor degree in pharmacology with a practical with practical experience of mixing natural vegetarian treatment. However, the skilled addressee might need a help for understanding the technical process of manufacture the creams mentioned in the claim (Vericore Ltd v vetrepharm ltd). 3- Common general knowledge of the skilled addressee . The background information of the skilled addressee (pharmacist) related to tool-box in pharmacology and the basis in is known as common general knowledge and it is judicially defined as: '' standard texts or material accepted without question by those in that line of work, but not prior patents'' according to (General Tire v Firestone) case, however, the main difficulty that judges decided in patent cases have to face when identifying what the common knowledge and what is general knowledge whether we can consider the obscure sources known by the average person (the pharmacist) who is the skilled addressee in pharmacology , because known knowledge about the process of mixing ingredients for treatment doesn't make it general to become a common general knowledge, consequently, the common general knowledge of the skilled pharmacist must be at the same time common and general knowledge the average person in the pharmacology (Beloit Technologies v Valmet Paper Machinery). Accordingly because the skilled addressee who is going to read the Hackny's claims- is pharmacist and he have a practical experience of mixing natural treatment vegetable he would understand that heseltinol is used in manufacture of a cream for treatment and he would know that the hesltinol is a naturally occurring ingredient founded in portillo plants. 4- Allocation of meaning of the claims: Claim 1: ''a process for the manufacture of a cram for the treatment of human tissue, where by heseltinol having been extracted from crushed vegetable matter such as banana leaves is mixed with a suitable carrying medium'' In this claim the Hackney claim a second medical use form claim '' Swiss type'' claim, where section 2(6) for the first medical use of a known substance or composition, the further or second medical use of a substance or composition can be protected by a claim to the use of the substance for the manufacture of a medicament (cream) for specified medical use ( human tissue), the use of the compound( hesltinol) for the specified medial purpose is new, consequently the claim is considered to be novel although if the same substance (hesltionol) had previously been used in (medicine) for a different purpose before such as when the hesltionol has been used as a hire conditioner, this formula of claim was first allowed by the swiss patent office, as well as it allowed by the Enlarged Board of Appeal (G 05/83 EISAI/ second medical use OJIEPO, 1985), and also accepted in the court of appeal in( John Wyeth's and Schering's Application- [1985] RPC 545), however, if we focus in the wording in the claim it is a method claim for manufacturing of a cram, but it doses not adequately defined the invention it just mentioned that ''whereby heseltinol , having been extracted from crushed vegetable matter such as banana leaves, is mixed with a suitable carrying medium'', nevertheless this formula was accepted by the European Patent Office ( T 958/94 THRAPEUTIQUES SUBSTITUTIVES/ Anti-tumoral agent OJEPO 1997,241), although it is objectionable under section 14(5) of the PA 1977 and accordingly I don’t think that this claim acceptable for second medical use depending on the novelty and the inventive step below. 5- The alleged infringement conduct by Sharon and others: As the patentee, Hackney has the right to protect his claim of a process. He has also given the right to use the process or to offer it for use in the UK and he also have the right to prevent any one from using his patented process without his consent and under section 60 (1) (b) but this section is subject to a proviso that the patent is only infringed only if the defendant knew or it would have been obvious to the reasonable person that unauthorized used of the defendant would be considered as an infringement to the patent (Sherman 527). In addition, the where the invention is a process the defendant will be considered infringed if he disposes of or offers to dispose of or uses or imports and product obtained directly by means of that process according to 60 (1) (c). The facts tell us that Sharon has received a letter from Hackney asserting that the company is the owner of a patent for new ''and improved product for skin care, alleging that Sharon, Mrs .Coppertint, Garth and Tracy have all infringed the patent. However, when Sharon has checked at the UKIPO she discovered that the patent is granted for a process where by the hesltinol extracted directly form crushed vegetable, which led us to look for the provision apply for patent for a product obtained directly from a process, consequently, by considering the action of each of the alleged infringers conduct under section 60 of the patent act 1977: 6- Sharon and Coppertint alleged infringing actions: They are selling the product under the name Sheeno, ant that disposing right, is given to the owner's of product (Sherman 524) They offer the product to the local branch of the Doorway supermarket chain, and this is offer to disposing right is given to the owner of product (Gerber Garment Technology v Lectra Systems [1995] RPC 383 at 411-412) The fact that Sharon selling the product and she offers to local branch fall under section 60 (1) (c) direct infringement act because she dispose and putting on the market a product obtained directly by process according to the interpretation of Smith, Kline & French v Harbottle which give based on the Community Patent Regulation( section 60 (1) is based on Art 25/ CPC( which will become Article 7 Community Patent Regulation) 7- Grath alleged infringing act: He was growing more of the portillo plants on his local allotment ( i.e. he is supplying) portillo. Which is a means relation to an essential element for the invention for putting the invention of Hackney into effect, and this supplying is prohibited under section 60 (2) which constitute indirect infringement act. However, Grath state of knowledge to impose this section requires knowledge that he know that his supplying of portillo plant will make the invention working, to enable Sharon continuing her infringing. Tracey alleged infringing act: She is supplying a plastic bottles for hair conditioner ( i.e. she supplying) bottles which are relating to an essential element of the invention, and such action is prohibited by virtue of section 60 (2) even though the supplying of staple commercial product bottles is allow under section 60 (3), however, the defense doesn't stand here in relation to Tracey because her supply is made for the purpose of inducting Sharon and Coppertint to do and act which constitutes an indirect infringement act, in addition to, the nature relationship between sister and sister it make us believe that Tracey supplying element which is different form any requirement of here sister job as a hairdresser so she is surely might ask here why you need the bottle for?. 8- Defenses of the alleged infringers: After the claimant had proved that the infringers had commit an action involved within the ambit of section 60, then the burden on the defendant to show that there activities are exempted form the liability of infringement so they might rely on the following defenses: The law likewise affords Sharon with at least four probable steps of counter-actions. The steps are to counter the patentee’s claim of infringement in law and infringement in fact by the defendant. Sharon can either (a) show that the patent is actually not in force or (b) rely on one or more of the various statutory or case law defences to patent infringement. There are at least five legal defenses derived from Community Patent Law, aiming to strike a fair balance between the patentee and third parties. These are s60(5)(a), s60(5)(c), s60(5)(d), (e) and (f), s(60)(5)(g) and (h). Likewise, she can either (c) claim that the elements of the infringement action have not been established or (d) counter-claim that the patent is invalid and should be revoked. In consideration of the abovementioned possible legal counter-actions, the first three options seem not to be of use for Sharon. For one, we do not know from the narrative of the facts surrounding the issue whether or not HBBL pays the annual fee of/for the patent [see option (a)]; while [option] (b) limitedly applies to very specific scenarios. Hence, Sharon is left with [option] (d). The revocation of a patent is possible if the invention is not patentable. In the United Kingdom, what makes patentability is novelty, the inventive concept and industrial application (see PA Section 72(1) sub sections (a) and (b)). Commonsensically and legally, in pursuing this line of action, the burden of proof falls on Sharon. For (t)he burden of proof is upon the party seeking to impugn a patent on this ground and this is normally taken up by adducing appropriate expert evidence. Consequently, the party attacking a patent will seek to marshal and prove evidence as to the state of the art in the light of which a particular step is alleged to be obvious. The possible counterclaim by the Sharon and the others The alleged Sharon and the other are able to brought a counterclaim against Hackney's, relying on the defense in section 74 (3) that the patent was invalid ( put in issue) by ground the on which the patent may be revoked under section 72 (1), and the obvious ground is that invention is not patentable under section 1 (1) which led us to consider whether a) the invention is new (novelty). And b) it is involves an inventive step. Novelty According to Section 2 (1) PA says: ''An invention shall be taken to be new if it does not form part of the state of the art.'', however, according to section 2 (2) ( the state of the art in the case of an invention shall be taken to comprise all matter ... which has at any time before the priority date been made available to the public (whether in the U.K. or elsewhere) by written or oral description, by use or in any other way) all matter which before 1 April 2006 was made available to the public?, now we got for the purpose of the question the prior art tell us form the fact of the question the following. Bonito''the chambermaid'', who is a member of the public, told Sharon that for centuries the local custom had been to use. 1- Use heseltinol, 2- A naturally occurring ingredient 3- Found in portillo plants. 4 -The oil extract process is available to the public. So we have to have this exact match between the information of the prior art and the claim because for novelty we are comparing the whole of the claim v the information of the prior art, and the relevant authority for anticipation is Synthon BV v Smithkline Beecham plc- ([2006] RPC 323, [2006] 1 All ER 685, Lord Hoffmann at [19-33]) and by applying the test on the case: Was the information of the prior art (i.e.: local custom of use heseltinol …, the oil extraction process….) accessible (potentially rather than actually) by any member of the public (even one person) without any fetter of confidentiality? I think the answer of the question would be yes and the evidence for that that Bonito who is a member of the public as required by PLG Research Ltd v Ardon [1993] FSR access to the information free in law and equity and he enabled Sharon to arrive to this information easily to, consequently we have to ask: Did that information anticipate the invention, i.e. did it contain an enabling disclosure such that the skilled addressee, armed with the prior art, could perform the invention. Whether the prior art contains an enabling disclosure depends on a comparison of each claim of the patent with each individual item of prior art accordingly we have to consider the claims in relation to the prior art: Claim 1: 1- a process for the manufacture of a cream? Not mentioned in the prior art 2- For a treatment of human tissues? No it for heir conditioner. 3- Heseltinol? Yes it mentioned 4- Extracted for crushed vegetable matter? No it not mentioned 5- Banana leaves? No it not mentioned 6- Mixed with a suitable carrying medium? Not mentioned 7- Suitable carrying medium? Not mentioned Claim 2: 1- Heseltinol? Yes it mentioned 2- As founded in crushed vegetable matter? Not mentioned 3- Banana leaves? Not mentioned. As we saw we haven’t exact match between the item of prior art and all the elements or integers of a claim, so the claims are valid for novelty because the prior art “wouldn’t the prior use infringe if carried out today?” According to Synthon BV v Smithkline Beecham, however the claim still subject to the test of inventive step under section 3 PA 1977 as following. The inventive step According to section 3 of the PA 1977 ''an invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of s2(2) above and disregarding s2(3)'' By applying the test of the inventive step of Windsurfing International v Tabur Marine [1985] RPC 59 at 73 as it amended by Pozzoli SpA v BDMO SA [2007] EWCA Civ 588 on the of the case and if we looked to the case we have got the inventive concept which is a process of extract heselinol for treatment product, and we have the skilled addressee who is a bachelor degree in pharmacology with a practical with practical experience of mixing natural vegetarian treatment, we have to compare the inventive concept (process of extract heselinol from vegetable for treatment product) with the prior art 1- Use heseltinol, 2- A naturally occurring ingredient 3- Found in portillo plants. 4 -The oil extract process is available to the public. And without any knowledge of Hackney's claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention? I don’t that the differences are obvious to constitute an invention so the skilled addressee might realized that the possibility of use banana leaves to extract heseltinol, and this seems in favor Sharon. The scope of the patent According to section 125 (1) of the PA, and to article 69 of the EPC, they provided the extent of protection conferred by the claim of the patent must be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawing contained in that specification. The scope is necessary to see whether the Sharon's process / product falls within the wording of the Hackney's claims, and the test is determined in Kirin Amgen Inc v Hoechst Marion Roussel Ltd [2005] 1 All ER 667 (HL), by comparing the integers of the claim with the alleged infringement invention of Sharon's: 1- Does Sharon's have a process for the manufacture of a cream? No. 2-is it for a treatment of human tissues? No it for heir conditioner. 3- Does it have Heseltinol? No oil (we don’t know what is the heseltinol is it oil?) 4- Does Sharon extract it from a crushed vegetable matter? No from mashed leaves of portillo. 5- Does it have a Banana leaves? No. 6- Does it Mixed with a suitable carrying medium? No. 7- Does it with Suitable carrying medium? No. So where we have different variants, we apply Kirin and apply Lord Hoffmann question in respect to the interpretation of the claim: What would a person skilled in the art have understood the patentee to have used the language of the claim to mean? And according to the skilled addressee have to construe Hackney's health claims purposively which give wider ambit than the literal meaning of the words so that we can guarantee fair protection to the patentee by not allowing to the dress up infringing of Hackney invention by not taking the for example the non material element of his invention, however, the construction of Hackney's claims should interpreted by the skilled addressee by reading the claims which according to Lord Diplock to restricting the scope of monopoly of Hackney's(Catnic Components v Hill & Smith [1982] RPC 185 at 241), and not to anticipated by the prior art, and there is a an important reason for that in Sharon case, is how the skilled addressee would interpreted the technical terms or scientific expression such as heseltinol, whether it will encompass the oil, because we don’t know, and the numerical rangers of the claim such as the meaning of '' mixed with a suitable carrying medium''. On the other hand, and to secure a reasonable degree of certainty for third parities such as Sharon, Coppertint, Garth, Tracey as required by the in interpretation of Article 69 of EPO as well as 125 of PA 1977, and to limit the non literal reading of the claim we applied the test of the obviousness above by the skilled addressee, however, the problem which give arise in respect applying that test is the level of the knowledge that should imputed to the skilled addressee, should he told that the invention's of Sharon works? Or if should provided with the invention without any further explanations or instruction because sense we gave him a more information it will find the it would be obvious that the differences haven’t a material effect on the invention work, however the court of appeal assert that the skilled addressee have a knowledge about the alleged infringing product of ( Sharon's product), but the skilled addressee '' would not know whether it worked or that it had a material effect on the way the invention works''( Sherman,539) Read More