Andrew Lykiardopoulos QC, alongside Anna Edwards-Stuart of 11 South Square, appeared for the Defendant, the proprietor of five patents concerning both the manufacture of particles to be used in pharmaceutical compositions for inhalation and the compositions themselves.
The Defendant alleged that the Claimants had infringed its patents by the manufacture and sale of certain dried powder inhalers. The Claimants denied infringement and claimed revocation of the patents on the grounds of obviousness over three pieces of prior art. The Claimants also alleged that the patents were insufficient in that they did not enable a skilled person to determine whether a product or process fell within the claims.
In addition the Claimants sought an Arrow declaration, submitting that their process was objectively obvious at the priority date in light of the prior art. The Claimants submitted that such a declaration would serve a useful purpose, despite the Defendant giving an undertaking that it would not assert certain additional patents should the patents in issue be found to be invalid and not infringed. It was argued that neither success at trial nor the undertaking would give the Claimants the commercial certainty they required. The Defendant submitted that a declaration would not serve a useful purpose and that the proposed declarations were unclear.
Arnold J held that the Defendant’s experiments had not established that the Claimants had infringed the patents. It was further held that the patents were insufficient. The patents gave little guidance on how to determine whether a process had produced the particles claimed, and the skilled person could not make this determination without undue effort. However, the patents were found to be non-obvious over the prior art since there was no evidence that making non-obvious modifications to the prior art processes would produce the claimed particles.