2. In a similar action in the United States, the U.S. District Court for the Southern District of Florida used the doctrine of prosecution history estoppel to limit the scope of the claims to construe the claim as being limited to synthetically produced material thereby excluding a product produced in the liver by metabolization of terfenidine in the liver. 41 USPQ 2d 1125 (SD Fl, 1996).
3. T296/93, reported in part [1995] OJ EPO 627 and [1997] RPC 1.
4. [1991] RPC 485.
5. The key to the decision seems to lie the following dicta by Lord Hoffmann:
Whenever anything inventive is done for the first time it is the result of the addition of a new ides to the stock of human knowledge. Sometimes, it is the idea of using established techniques to do something which no one had previously thought of doing. In that case, the inventive idea will be doing the new thing. Sometimes, it is finding a way of doing something which people had wanted to do but could not think how. The inventive idea would be the way of achieving the goal. In yet other cases many people may have a general idea how they might achieve a goal but nit how to solve a particular problem which stands in their way. If someone devises a way of solving the problem, his inventive step will be that solution, but not the goal itself or the general method of achieving it.
and
It is inevitable in a young science, like electricity in the early nineteenth century or flying at the turn of the last century or recombinant DNA technology in the 1970's that dramatically new things will be done for the first time. The technical contribution made in such cases deserves to be recognised. But care is needed not to stifle further research and healthy competition by allowing the first person who has found a way of achieving an obviously desirable goal to monopolise every other way of doing so.
A significant factor on the decision seem to have been the conclusion reached by their Lordships that what the defendant did owed nothing to the invention made but rather was based on the subsequent publication of the sequence of the DNA in question.
6. See note ... , above.
7. The House of Lords did not address what seems to be a difference in the standard to be applied in "obvious to try situations between the EPO and the lower English courts. As noted above, the EPO has adopted a requirement that in such circumstances there must be a reasonable expectation of success in what is tried. The Court of Appeal on the other hand, in cases such as Gennentech v Wellcome and the Patents Court in Chiron v Organon seemed to cling to older case law holding a patent invalid if what was claimed was obvious to try in the sense that it was well worth trying to see if it would have beneficial results. In Biogen Lord Hoffmann noted that in the present case the issue was whether the man skilled in the art would have thought that the task before him, although perhaps obvious in concept was so beset by obstacles as not to be worth trying but went on to assume without deciding that what was done was not obvious.
8. Other examples of the EPO granting claims without concern as to what may constitute infringement can be found in the use claim decisions in Triazole derivatives/BASF T231/85 [1989] OJ EPO 74 and Friction reducing additive/Mobil G2/88 [1990] OJ EPO 93 where claims that seemed to cover physical steps that had been done before were granted as use claims because a novel purpose was stated.
