Guest Post: A rejoinder from the IPKat

Continuing with our debate, between Darren Smyth of IPKat fame and Siva Thambisetty, on the merits of the Supreme Court’s decision in the Novartis case, we have for our readers a rejoinder from Darren in response to Siva’s last post on this issue.

The two previous posts on this issue can be accessed over here and here. 

by Darren Smyth 

I was very interested to read the thoughts of Siva Thambisetty. However, with the greatest of respect I think that she is also committing a category error, this time in relation to enablement. 

What a patent must enable is the invention. It most emphatically does not have to enable every possible infringement. The invention of the Zimmermann patent is (for the present purposes) Imatinib. Not the particular salts. It is imatinib which must be and was enabled. 

Consider two possible salts of imatinib (leaving aside for the time being, for the purposes of clarity of argument, the mesylate). One is the hydrochloride salt which was explicitly disclosed in Zimmermann. The other is a salt of a new acid, which I shall call thaumatic acid, because of its miraculous properties. This is not disclosed in Zimmermann. Nor in fact in any document until I came along and invented it just now. It is completely clear to me that both imatinib hydrochloride and imatinib thaumatate infringe the Zimmermann patent. In the infringement analysis, it does not matter what inventive extra features are added, the infringement test is the same. Whether the infringed patent “enables” those extra features is intrinsically irrelevant. 

I would actually put the position more boldly if pushed. The Zimmermann patent claims ended “or a pharmaceutically acceptable salt thereof”. If they had not so ended, so that the relevant claim effectively simply recited “Imatinib”, I consider that Novartis would have been quite correct to argue that it was infringed by imatinib mesylate (and imatinib hydrochloride and imatinib thaumatate). The invention, imatinib, would have been reproduced in the infringement, so why should it not be considered to infringe? But then there would have been no question of the Zimmermann patent “disclosing” the salt, because it would not have done so. 

Siva Thambisetty then refers to, and rather appears to endorse, yet another category error by the Supreme Court, this time in relation to “elastic” claims. Paragraphs 140 to 157 of the Supreme Court judgment take a passage from Terrell which is about interpreting a term in the claim one way for infringement and another way for validity, and then wrongly use this to say that the coverage (scope in relation to infringement) and the disclosure of a patent are the same. The point that Terrell is making is a quite different one – it is not permissible to construe a term (such as in the present case “salt”) one way for validity and another for infringement. But Novartis construed “salt” in relation to the Zimmerman patent at all times in only one way – to mean “salt”, no more and no less. Again by carelessly mixing up concepts (each of which is perfectly valid in itself) fundamental errors are committed. Incidentally, a much more vivid illustration of the “elastic” claim concept is the “Angora Cat” analogy. But this has nothing to do with the case before the Supreme Court. 

At the risk of alienating any sympathy that I may still have in the hearts of your readers, I really don’t accept that the problem is that “Patent lawyers live in a bizarre world where we are used to inverted categories of thought that makes little sense to external observers. Other lawyers, even other IP lawyers, often struggle to understand the pretzel shaped law that we have come to take for granted here. So we find ourselves in a position where patent law institutions huddle together seeking content-free legitimacy in mere uniformity.” I do not consider that the precepts of patent law are intrinsically any more arcane than other fields of law such as tort or contract. The problem is that generalist lawyers have not spent anywhere near as much time and effort grappling with patent law as they have with the other fields of law that they have come to feel familiarity with. So naturally they find it confusing, as no doubt they found the concept of estoppel when they first encountered it. But then they blame the law, not their own lack of understanding.