Tom Moody-Stuart KC represented the claimants (“ACD”) in patent validity and infringement proceedings brought against the defendants (“MI”). ACD’s patents in suit (“EP572” and “EP439”) claimed a method and a kit, respectively, for performing Fluorescent in situ hybridization (“FISH”) of nucleic acids.
FISH is a form of hybridization assay using ‘target probes’ – short strands of nucleotides –which link the nucleic acid under observation with a ‘label probe’ containing a fluorescent substance which allows the nucleic acid to be detected.
Meade J found both patents would have been infringed by MI’s kits, were they not obvious over two research papers: “Collins” read in conjunction with “Kern”. The judge held that the skilled person would be motivated to adapt the disclosure in these documents into an in situ assay of the type claimed by the patent, with a reasonable expectation that it would be successful.
In reaching his conclusion on infringement, the judge needed to consider questions of joint tortfeasance, as MI’s case was that it sold its kits abroad, after which customers imported them and put them into effect in the UK. He found that MI’s ‘troubleshooting’ service amounted to a common design with customers to get the products working in such a way which infringed the claims of the patents, and for which MI would be liable.