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Illumina v Premaitha, UK Patents Court, Carr J, 21 November 2017

Illumina has succeeded in a claim that a non-invasive prenatal diagnosis test offered by Premaitha infringed five related patents and that a gender testing component of an Ariosa Diagnostics product infringed a further patent. This lengthy, yet insightful judgement is effectively three judgments in one and considered a number of patent law issues. Perhaps most notably, important elements of Actavis v Lilly were brought to light and, in particular, Carr J provided further clarity on the meaning of “normal interpretation” as laid out by Lord Neuberger in that case.

In relation to an argument on insufficiency, Carr J applied the existing principle that if a patented invention teaches a principle capable of general application, then the patent’s claims may be constructed in general terms. He considered that such general claims will be sufficiently enabled, “If one can reasonably expect the invention to work with anything which falls within the general term”. [121]

In relation to one patent, Illumina submitted that the claims were of general application and that improvements to the invention based on that general application did not have to be enabled or anticipated by the patent. On this key issue, Carr J agreed and resolved that, “Fairness to the patentee may require that unforeseeable variants, enabled for the first time by new technology, fall within the scope of protection, although the patentee is unlikely to succeed where the variant was unforeseeable at the priority date. A variant which represents an inventive step may nonetheless infringe; Actavis at [63] – [64]. It would not make sense if, in those circumstances, the patent was found to be insufficient solely because such an immaterial variant, which it did not enable, fell within the scope of its claims.” [144]

On a question of infringement, Carr J raised the principles laid out in the landmark Actavis decision. He provided reassurance as to the meaning of “normal interpretation” in the first limb of the test by agreeing with Arnold J’s comments in Mylan v Yeda, determining that “normal interpretation” for the purposes of this particular test means “purposive interpretation”. Ultimately, Carr J decided that some claims had been infringed by certain products of the defendants.

A final interesting point dealt with in this decision was a question of whether there would be infringement in respect of a process where one or more of the steps of the process were carried out in another country. Carr J decided that the crucial question was, “Where, in substance, is the process to be used?” The judge found in favour of Illumina on grounds of direct infringement and held that, “Any other result would make it far too easy to avoid infringement of patents of this nature, given the ease of digital transmission and the ability to off-shore computer processing.” [508]

A copy of the decision can be read here.

Headnote: Storm Lindenberg, Marks & Clerk Solicitors LLP