Martek Biosciences Corporation v Cargill International Trading Pte Ltd

• Jurisdiction: Singapore
• Judgment Date: 29 March 2011
• Date: 29 March 2011
• Docket Number: Originating Summons No 156 of 2010
• Court: High Court (Singapore)

Martek Biosciences Corp

Plaintiff

and

Cargill International Trading Pte Ltd

Defendant

[2011] SGHC 71

Tay Yong Kwang J

Originating Summons No 156 of 2010

High Court

Patents and Inventions—Subject matter—Whether amendments to patent disclosing additional matter

Patents and Inventions—Validity—Novelty and inventive step—Whether patent invalid for lack of novelty and inventive step

Patents and Inventions—Validity—Patent specification—Whether sufficient enabling disclosure by patent specification

Patents and Inventions—Validity—Proper characterisation of inventive concept

The applicant was the proprietor of Singapore Patent P-No 49307, entitled ‘Microbial Oil Mixtures and Use Thereof’ (‘the Patent’) , granted by the Intellectual Property Office of Singapore (‘IPOS’) on 10 January 2002. The applicant filed two sets of amendments prior to the grant of the Patent (‘the 1997 Amendments’ and ‘the 1999 Amendments’ respectively) . The respondent filed an application on 20 January 2006 to revoke the Patent on the grounds that (a) the invention was not a patentable invention under s 80 (1) (a) of the Patents Act (Cap 221, 2005 Rev Ed) (‘the Act’) ; (b) insufficiency, ie, the Patent specification did not disclose the invention clearly and completely for it to be performed by a person skilled in the art; and (c) the 1999 Amendments disclosed matter in Patent specification beyond that disclosed in the application for the Patent as filed. On 15 September 2006, the applicant filed a set of proposed amendments to the claims in the Patent (‘the Proposed 2006 Amendments’) . The respondent opposed the Proposed 2006 Amendments on the ground that they constituted additional subject matter extending beyond the application as originally filed. The applicant then filed another set of amendments on 19 March 2008 (‘the Proposed 2008 Amendments’) . The respondent again objected to the Proposed 2008 Amendments. Pursuant to s 80 (2) of the Act, the Patent was re-examined by an examiner from the Danish Patent and Trademark Office who then produced a report (‘the Re-examination Report’) . The respondent's application for revocation of the Patent (‘the Revocation Proceedings’) and the respondent's objections to the 1999 Amendments, the Proposed 2006 Amendments and the Proposed 2008 Amendments (‘the Amendment Proceedings’) were consolidated and heard together by an IPOS Tribunal (‘the Tribunal’) . The Tribunal held: (a) the 1999 Amendments were allowable under s 84, except for claim 30; (b) the Proposed 2006 and 2008 Amendments contain some claims which did not meet the requirements of s 84; (c) all the claims in the Proposed 2006 and 2008 Amendments as well as the 1999 Amendments were not patentable; (d) all the claims in the Proposed 2006 and 2008 Amendments as well as the 1999 Amendments met the threshold of sufficiency, ie, disclose the invention clearly and completely for it to be performed by a person skilled in the art. The applicant appealed against the Tribunal's decision in both the Revocation Proceedings and the Amendments Proceedings, and the Respondent cross-appealed against certain aspects of the Tribunal's decision in the Amendment Proceedings. In particular, the applicant characterised the Patent as containing two inventions. The first invention was producing an infant formula supplemented only with arachidonic acid (‘ARA’) and docosahexaenoic acid (‘DHA’) , when the prior state of the art had assumed it necessary for infant formula to match human breast milk (‘HBM’) with regard to all its long chain polyunsaturated fatty acids (‘lc PUF As’) (‘the First Invention’) . The second invention was the discovery that the problems of low weight gain associated with fish-oil supplemented infant formula could be overcome by the addition of ARA in the form of microbial oil to the formula (‘the Second Invention’) . The respondent disputed whether the Patent disclosed the First Invention at all. With regard to the Second Invention, however, the respondent did not dispute that the Patent disclosed the Second Invention but rather contended that it was not patentable on various grounds.

Held, allowing the appeal in the Revocation Proceedings and dismissing the appeal and cross-appeal in the Amendment Proceedings:

(1) The Applicant was correct that the Patent disclosed the First Invention, and it was therefore this inventive concept (in addition to the Second Invention) that had to be tested against the requirements of novelty and inventive step for the purposes of establishing whether the Patent was a patentable invention within s 80 (1) (a) of the Act: at [36] to [51].

(2) None of the prior art taught the use of only an ARA-containing microbial oil and a DHA-containing microbial oil for the purpose of replicating the benefits of HBM in an infant formula supplement. The First Invention was therefore not anticipated by prior art and fulfilled the requirement of novelty: at [56] to [59].

(3) With regard to the Second Invention, none of the prior art taught that it was an excess of eicosapentaenoic acid that caused the problem of low weight gain associated with fish-oil supplemented infant formula and that this could be overcome by the addition of ARA in the form of microbial oil to the formula. The Second Invention was therefore also not anticipated by prior art and fulfilled the requirement of novelty: at [60] to [64].

(4) The respondent had failed to discharge its burden of showing that the First and Second Inventions respectively did not involve inventive steps because they would have been obvious to a skilled man having regard to the state of the art. In any case, both the First and Second Inventions clearly involved inventive steps because they went against the conventional wisdom of the state of the art: at [65] to [67].

(5) The respondent's contentions that the Patent should be revoked for lack of sufficiency were dismissed. It was not enough for the respondent to highlight ambiguities in the plain language of the claims. Rather, it had to prove that those ambiguities would render the invention unworkable from the point of view of a skilled addressee attempting to give the specification of the Patent practical meaning and endeavouring to ascertain the intention of the draftsmen. The respondent had adduced no expert testimony to prove this, and had in fact failed to rebut the applicant's expert evidence as to how a skilled addressee would understand how to work the invention: at [69] to [75].

(6) The Tribunal was correct to disallow claim 30 of the 1999 Amendments on the basis that it contained additional matter: at [82] to [84].

(7) The Tribunal was correct in all its findings on the allowability of the claims in the Proposed 2006 Amendments and the 2008 Amendments, except for its finding that claim 42 of the Proposed 2006 Amendments was allowable and that therefore claim 45 of the Proposed 2006 Amendments was also allowable in so far as it is dependent on claim 42: at [85] to [106].

[Observation: The Tribunal adopted the approach of first examining the allowability of the 1999 Amendments, the Proposed 2006 Amendments and the Proposed 2008 Amendments in turn before examining the validity of the Patent as amended by each set respectively. A better approach would have been to first examine whether the Patent was valid in the first place and, if it was, then to examine whether the respective sets of amendments were allowable - this was thus the approach the court adopted: at [27].

Where parties had clearly agreed to conduct IPOS proceedings like court trials, they had to abide by the principles governing court trials including the Evidence Act (Cap 97, 1997 Rev Ed) ) and the Rules of Court (Cap 322, R 5, 2006 Rev Ed) . In this case, the withdrawal of one of the respondent's expert witnesses from cross-examination meant that the evidence in his statutory declaration bore no weight at all: at [39].

While it was true that commercial success might play a role in establishing that an invention would not have been obvious to a person skilled in the art, the ‘commercial success’ of the Patent was not accorded too much weight in this case because the evidence adduced was not specific enough to prove that the alleged commercial success was due to the invention itself rather than extrinsic factors such as successful marketing: at [68].

The respondent's evidence as to the status of the applicant's various foreign patents allegedly corresponding to the Patent did not really aid in proving or disproving the Patent's validity: at [76].]

Bonzel (T) v Intervention Ltd (No 3) [1991] RPC 553 (refd)

Electric & Musical Industries Ltd v Lissen Ltd (1938) 56 RPC 23 (refd)

First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd [2008] 1 SLR (R) 335; [2008] 1 SLR 335 (refd)

Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 (refd)

Mühlbauer AG v Manufacturing Integration Technology Ltd [2010] 2 SLR 724 (folld)

Pozzoli Sp A v BDMO SA [2007] FSR 37 (refd)

Rediffusion Simulation Ltd v Link-Miles Ltd [1993] FSR 369 (refd)

Siegfried Demel (trading as Demotec Siegfried Demel) v C & H Jefferson (a firm) [1999] FSR 204 (refd)

Evidence Act (Cap 97, 1997 Rev Ed) s 137

Patents Act (Cap 221, 1995 Rev Ed) s 116 (6)

Patents Rules (Cap 221, R 1, 1996 Rev Ed) rr 80, 80 (3) , 81 (1) (a) , 85 (1)

Patents Act (Cap 221, 2005 Rev Ed) ss 13 (1) , 14 (1) , 15, 80 (1) (a) , 80 (1) (c) , 84 (3) (consd) ;ss 80, 80 (1) (d) (i) , 80 (2) , 83, 83 (2) , 84, 84 (3) (a) , 84 (3) (b) , 113

Rules of Court (Cap 322, R 5, 2006 Rev Ed) O 38 r 1 (2)

Stanley Lai SC and Vignesh Vaerhn (Allen & Gledhill LLP) for the applicant

Daniel Koh (Eldan Law LLP) , Ms Wendy Low Wei Ling (Rajah & Tann LLP) for the respondent.

Judgment reserved

Tay Yong Kwang J

Introduction

1 This is an appeal by the applicant (‘the Applicant’) against the decision (‘the Decision’) of the Deputy Registrar of Patents and the Principal...