Dewey & Almy Chemical Co. v. Mimex Co., Inc., 124 F 2d 986 (1942) (U.S. Court of Appeals for the Second Circuit)

The United States Court of Appeals for the Second Circuit held that a prior art to be an anticipation must bear within its four corners adequate directions for the practice of the patent. If the earlier disclosure offers no more than a starting point for further experiments, if its teaching will sometimes succeed and sometimes fail, if it does not inform the art without more how to practice the new invention, it has not correspondingly enriched the store of common knowledge, and it is not an anticipation.

Amgen Inc., v. Chugai Pharmaceutical Co., Ltd., and Genetics Institute, Inc. (U.S. Court of Appeals - 927 F.2d 1200, Fed. Cir. 1991)

The the Court of Appeals for the Federal Circuit held that for the patenting of microorganisms the best mode disclosure requirement does not necessarily entail an obligation by the patent applicant to deposit a sample of the claimed microorganism.

Copolymers/Dupont, T124/87, OJ 1989 (1988) (European Patent Office Boards of Appeal)

In this case, the European Patent Office Boards of Appeal decided on the patentability of a class of compounds defined by parameters within numerical ranges. It denied the grant of a patent, finding that the invention lacked novelty and an inventive step.

KSR International Co. v. Teleflex Inc. et al., 550 U.S. 398 (2007)

This case concerned the condition of non-obviousness as a prerequisite for patentability. The Supreme Court of the United States (hereinafter: the Court) reinforced the objective analysis approach for applying 35 U.S.C. §103 (i.e. the domestic provision on non-obviousness) as it was established with the three determining factors in Graham v. John Deere.

Graham v. John Deere Co. of Kansas City (United States Supreme Court383 U.S. 1, February 21, 1966)

In this case, the U.S. Supreme Court established that the element of non-obviousness must be assessed with the help of the following factors: (1) the scope and content of prior art, (2) the differences between the prior art and the claims at issue and (3) the level of ordinary skill in the concerned art.  Furthermore, secondary considerations may be commercial success, long felt but unresolved needs or the failure of others to find a solution.

Lowell v. Lewis, 15 Fed. Cas. 1018 (1817) United States Circuit Court, D. Massachusetts.

This case concerned three main issues in the context of patent infringement litigation: (1) who bears the burden of proving validity or invalidity of the patent; (2) what is required for an invention to be “useful” or “capable of industrial application”; and (3) what degree of similarity is needed for an accused product to infringe a patent. The Circuit Court of Massachusetts/United States decided that the plaintiff in a patent infringement suit bears the burden of proving the validity of its patent by establishing novelty and industrial application.

Warner-Lambert Company, LLC v (1) Actavis Group PTC EHF (2) Actavis UK Limited (3) Caduceus Pharma Limited, 28 May 2015 (England and Wales Court of Appeal)

In this decision on interim relief for alleged patent infringement, the Court of Appeal construed the scope of a pharmaceutical patent claim in "Swiss" format, which is typically phrased as a process claim for the use of a compound in the production of a medicine for use in a particular therapeutic indication (new medical use claim)

Case Summary

Scripps Clinic Research Foundation v. Genentech Inc Scripps Clinic & Research Foundation (1991) (U.S. Court of Appeals)

The Federal Circuit remanded for trial (further clarification of facts) to the district court a number of motions for summary judgment regarding the validity and the infringement of certain product claims and product-by-process claims. The Federal Circuit inter alia decided that in litigation (concerning patent infringement and validity), patent claims must be construed in a similar manner as under patent prosecution (concerning the grant of a patent).

Pharma Dynamics (Pty) Ltd v. Bayer Pharma AG, 2014 (The Supreme Court of Appeals of South Africa)

In this case, the Supreme Court of Appeals interpreted the claims of a pharmaceutical divisional patent and examined its novelty and inventive step. The Court also provided guidance on the admissibility of divisional patents under South African law.