Summary
For obviousness, the skilled person may differ from the addressee of the patent. The court should identify the problem, locate it within the established field existing at the priority date, and construct the notional person or team working in that field.
Enablement across a claim is required throughout any range relevant to the invention’s value or utility. Ordinary structural or functional language may cover later-developed embodiments without causing insufficiency, provided the skilled person can select suitable embodiments without undue burden.
A combination is not a mere collocation where its components are capable of materially interacting and their satisfactory non-interference must be established experimentally. Under the doctrine of equivalents, an express and deliberately narrow definition may show that strict compliance was intended, even where the excluded variant is immaterial.
Factual background
The claimant owned five patents concerning DNA sequencing by synthesis. Three modified-nucleotide patents claimed the use of a 3′-O-azidomethyl group as a reversible chain terminator. A fourth patent claimed the use of ascorbate in an imaging buffer to mitigate photodamage. The fifth concerned a fluorescent dye-linker-nucleotide conjugate.
The defendants proposed to market StandardMPS, CoolMPS, a two-colour variant and DNBSEQ E. They denied infringement of disputed claims and challenged validity for obviousness, insufficiency, lack of technical contribution and added matter. The court also considered priority, amendments, claim construction, infringement by equivalents and whether the dye conjugate was a mere collocation.
Held
Modified-nucleotide patents. EP (UK) 1 530 578, EP (UK) 3 002 289 and EP (UK) 3 587 433 were valid in their amended forms. For obviousness, the relevant skilled team worked in the established field of sequencing by synthesis. Although reversible chain termination and its lack of practical success formed part of the common general knowledge, the team had no reason to read Zavgorodny’s synthetic-chemistry disclosure as proposing azidomethyl for sequencing. Nor was there a reasonable prospect that the modified nucleotide would be incorporated and deblocked with useful speed and yield. The claims were therefore inventive.
The priority document gave an enabling and plausible disclosure that 3′-O-azidomethyl nucleotides could be incorporated, block efficiently and be removed under neutral aqueous conditions. The relevant claims were entitled to priority. The insufficiency challenges also failed. The choices of nucleotide, polymerase, linker and label were not ranges relevant in the Regeneron sense, and suitable components could be selected without undue burden. Read length was not a claimed relevant range.
The unamended synthesis limb of the method claims served no useful purpose and lacked technical contribution. Deleting that limb was allowed. The remaining amendments did not add matter, subject to the claimant explaining the purpose of the amendment to claim 9 of the 289 patent.
All four accused systems infringed the specified claims of the 578 and 433 patents and claims 1, 5 and 6 of the 289 patent. CoolMPS infringed the 578 method claim because incorporation could occur in two stages and a non-covalent antibody structure could constitute a cleavable linker. The two-colour and DNBSEQ E systems infringed the 578 kit claim, but not claim 4 of the 289 patent, which required labelled nucleotides of all four types.
Ascorbate patent. EP (UK) 1 828 412 was invalid. In light of Buechler and the common general knowledge, it was obvious to add ascorbate to mitigate the appreciable risk of fluorescence-induced DNA photodamage. CoolMPS was outside the claim both literally and by equivalence because the specification deliberately defined incorporation by formation of the phosphodiester linkage.
Dye-conjugate patent. EP (UK) 2 021 415 was valid and infringed by StandardMPS. Its molecule was a single invention, not a collocation. The dye and linker-nucleotide portions could interact, and satisfactory non-interference required experimental demonstration.
The court’s approach to earlier authorities
Available to signed-in members.
Appellate history
not stated in the judgment.
Appeal route
- This judgment [2021] EWHC 57 (Pat) High Court (Patents Court)
- Appealed to[2021] EWCA Civ 1924Outcomeappeal dismissed
Key cases cited
25 authorities cited.
- Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27
- Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48
- Sabaf SpA (a company incorporated under the laws of Italy) (Respondents) v. MFI Furniture Centres Limited and others (Appellants)Sabaf SpA (a company incorporated under the laws of Italy) (Appellants) v. MFI Furniture Centres Limited and others (Respondents)(Conjoined Appeals) [2004] UKHL 45
- Icescape Ltd v Ice-World International BV & Ors [2018] EWCA Civ 2219
- Idenix Pharmaceuticals Inc v Gilead Sciences Inc & Ors [2016] EWCA Civ 1089
- Medimmune Ltd v Novartis Pharmaceuticals UK Ltd & Ors [2012] EWCA Civ 1234
- Nokia OYJ (Nokia Corporation) v IPCom GmbH & Co Kg [2012] EWCA Civ 567
- Apimed Medical Honey Ltd v Brightwake Ltd (t/a Advancis Medical) [2012] EWCA Civ 5
- Merck Sharp & Dohme Corp v Teva UK Ltd [2011] EWCA Civ 382
- Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819
- Novartis v Johnson & Johnson [2010] EWCA 1039
- Dr Reddy's Laboratories (UK) Ltd v Eli Lilly & Company Ltd [2009] EWCA Civ 1362
- Pozzoli Spa v BDMO SA & Anor [2007] EWCA Civ 588
- Garmin (Europe) Ltd v Koninklijke Philips N.V. [2019] EWHC 107 (Ch)
- Merck Sharp & Dohme Ltd v Ono Pharmaceutical Co Ltd & Anor [2015] EWHC 2973 (Pat)
- Folding Attic Stairs Ltd v The Loft Stairs Company Ltd & Anor (Rev 1) [2009] EWHC 1221 (Pat)
- Abbott Laboratories Ltd v Evysio Medical Devices ULC [2008] EWHC 800 (Pat)
- Mayne Pharma Ltd & Anor v Debiopharm SA & Anor [2006] EWHC 1123 (Pat)
- Inhale Therapeutic Systems v Quadrant Healthcare [2002] RPC 21
- Horne Engineering v Reliance Water Controls [2000] FSR 90
- Mentor v Hollister [1991] FSR 577
- Windsurfing International Inc v. Tabur Marine (Great Britain) Ltd [1985] RPC 59
- General Tire v Firestone [1972] RPC 457
- Trustees of Princeton/ OLED T 0455/12
- Dipeptidyl-Peptidase-Inhibitoren X ZB 8/12
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Cases citing this case
19 later cases · 19 positive
Most senior citing decisions:
- Modernatx, Inc v Pfizer Limited & Ors [2025] EWCA Civ 1032 applied
- Samsung Electronics Co., Ltd & Anor v ZTE Corporation & Ors [2026] EWHC 2235 (Pat) applied
- Accord Healthcare Limited v Novartis AG [2026] EWHC 2127 (Pat) applied
- Fujikura Ltd & Anor v Sterlite Technologies Limited [2025] EWHC 3181 (Pat)
- Samsung Biopis UK Limited v Alexion Pharmaceuticals Inc. [2025] EWHC 1240 (Pat)
- DW Windsor Limited v Urbis Schreder Ltd [2025] EWHC 563 (IPEC)
- Pfizer Limited v GlaxoSmithKline Biological SA & Anor [2024] EWHC 2523 (Pat)
- Samsung Bioepis UK Limited v Janssen Biotech, Inc [2024] EWHC 1984 (Pat)
- Modernatx Inc v Pfizer Limited & Ors [2024] EWHC 1695 (Pat)
- Advanced Cell Diagnostics, Inc v Molecular Instruments, Inc [2024] EWHC 898 (Pat)
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