Case Comment
Eli Lilly & Co. v.
Marzone Chemicals Ltd.
citation(s): (1977), 37 C.P.R. (2d) 3 (F.C.T.D. per Gibson J.)
Case Comment |
Eli Lilly & Co. v.
|
copyright 1997-2007 Donald M. Cameron
"Trifluralin has sold extensively.... the figures for agricultural chemical sales by Eli Lilly, substantially all of which are trifluralin (sold under the trademark Treflan), are: 1970 $ 57,000,000 1971 $ 74,800,000 1972 $105,000,000 1973 $151,000,000 1974 $200,500,000 1975 $237,500,000 1976 $212,300,000.
"For the defence of lack of novelty to succeed, references in the prior art must given an exact description; must given clear and unmistakable directions which will inevitably result in something within the claim; must give information which for the purpose of practical utility is equal to that given by the patent; convey information so that the person trying to solve the problem is able to say "that gives me that I wish"; must give such information to a person having ordinary knowledge that he will at once perceive the invention; and all the foregoing must be in a single reference document without the necessity of making a mosaic from several documents: see Steel Co. of Canada Ltd. v. Sivaco Wire and Nail Co. (1973), 11 C.P.R. (2d) 153 at pp. 189-92; Pope Appliance Corp. v. Spanish River Pulp & Paper Mills Ltd. (1928), 46 R.P.C. 23 at p. 54; and Lovell Manufacturing Co. et al v. Beatty Bros. Ltd. (1964), 41 C.P.R. 18 at pp. 45-8, 23 Fox Pat C. 112."
"In considering obviousness as has been said so often before, the Court should place itself in the position of a person who might have been seeking the solution prior to the alleged invention. That person must not possess the quality of inventiveness. That person is sometimes referred to in the case as a person skilled in the art. That person has recently been described by the House of Lords as an unimaginative technician: see Mills & Rockley (Electronics) Ltd. v. Technograph Printed Circuits Ltd., [1971] 8 F.S.R. 188 at p. 193-4, Lord Reid:
Whether or not, it was obvious to take a particular step is a question of fact; it was formerly left to a jury. But the question is not whether it is now obvious to the court (or to the jury) but whether at the relevant date it would have been obvious to the unimaginative skilled technician. A thing which now seems obvious to anyone may at that date have been far from obvious to him. In this case he would have been faced with a large variety of different methods, none of which had proved commercially useful. He would have had no assurance that any successful solution was possible, still less would he have known in what direction to look for it. He would be expected to try out all obvious modifications or combinations of these methods which seemed to him worth trying.
Some importance was attached by the appellants to a question formulated by Sir Stafford Cripps and cited in Sharp & Dohme Inc. v. Boots Pure Drug Co. Ltd. (1928) 45 R.P.C. 153 at 173.
"The real question is: was it for all practical purposes obvious to any skilled chemist in the state of chemical knowledge existing at the date of patent... that he could manufacture valuable therapeutic agents by making the higher alkyl resorcinols."
I do not think that this means that the hypothetical technician must try every possible permutation or combination of existing methods. That might be an endless task. In the passage which I have just cited there is the word "valuable". So what he must be supposed to have done is to try everything which would appear to him as giving any prospect of valuable results.
Objective tests only, not subjective tests must be applied. As was said in Pope Appliance Corp. v. Spanish River Pulp and Paper Mills Ltd., supra, at p. 55:
... After all, what is invention? It is finding out something which has not been found out by other people. This Pope in the present Patent did. He found out that the paper would stick, and the practical problem was solved. The learned Judge below say that all this might have been done by anyone who experimented with "doctors" and air-blasts already known. That is, that someone else might have hit upon the invention. There are many instances in various branches of science of independent investigators making the same discovery. That does not prevent the one who first applies and gets a patent from having a good patent, for a patent represents a quid pro quo. The quid to the patentee is the monopoly; the quo is that he presents to the public the knowledge which they have not got...
(In this case, the quo is knowledge the public did not have and needed to solve the problem of grassy weeds in crops.)
"None of these persons found any prior references leading any of them to the compound trifluralin. It is possible that if any of their researchers had found anything of value in the prior art, faced as they were with the same problem as Eli Lilly (Soper), such prior art would have led them to make trifluralin; but all references in the prior art did not. Such prior art, therefore, could not have been "very plain"; or as Lord Wilberforce said in Mills & Rockley (Electronics) Ltd. v. Technograph Printed Circuits Ltd., supra, at p. 197:
One other point is worth making at this stage. Among those concerned with the general problem of replacing point to point wiring by something simpler, were some of the most powerful concerns in industry: Igranic, Philips, Radio Corporation of America, Bell Telephone Co., are names that speak for themselves. Yet by 1943 no generally workable method had evolved. The respondents' methods itself took, it is true, some time to establish itself as a commercial success... Its viability has been plainly vindicated.
Considering generally all the references cited in defence and after considering the evidence in chief and especially the cross-examinations, the evidence of Safe and the discovery evidence it is probable that at the time of the invention most of the references relied on in defence would probably not have been located by any researcher confronted with the problem which was solved by the making of the compound trifluralin. These references as stated are carefully selected pieces of prior knowledge, some not even concerned with herbicides; all probably not part of common knowledge. Also, it would be improbable that any such researcher would go outside the herbicide art and make a selection of references such as the defence made in this case of the prior art. It is impossible to assume in this case that such would have been made in any event.
What Soper did in this case is also to be distinguished from what was done in certain pharmaceutical cases where the alleged patent was found invalid because of obviousness. In those cases, the prior art disclosed the starting material. An example of these cases in Halocarbon (Ontario) Ltd. v. Farbwerke Hoechst AG., Vormals Meister Lucius & Bruning (1976), 28 C.P.R. (2d) 63, 13 N.R. 330, [1976] 2 f.C. 468, in which the prior art disclosed the starting material. Jackett, C.J., said at pp. 64-5 (includes footnote):
The only question in issue is whether the "liquid phase" aspect of this process involved "inventive ingenuity". It is also common ground that, in 1954, R.N. Haszeldine and B.R. Steele disclosed that the same "monomer" could be reacted with the same bromide under the same conditions to produce the same product. It appears that such a reaction might be carried out in what might be described as a "gaseous phase" or it might be carried out in what might be described as a "liquid phase"; but their paper did not specify that such reaction must be in any particular phase -"liquid" or "gaseous". (That being so, I am not inclined to disagree with the learned trial Judge when he holds that the Haszeldine disclosure does not constitute an anticipation of claim 10.) Prima facie, it seems to me that the Haszeldine disclosure is such a clear-cut indication of a "process" for making "isohalothane" by reacting the "monomer" with hydrogen bromide that there cannot be said to be any "inventive ingenuity" involved in discovering that the reaction can be brought about in the "liquid phase". (The respondent's argument, if I correctly appreciated it, was that, owing to the special nature of chemistry, where a chemical reaction is tried with useful results, inventive ingenuity is to be implied as long as that particular reaction had never actually been tried before. Even if that generalization is correct (a matter concerning which I have doubt), I have not been persuaded that the same thing can be said about trying an old reaction in a "phase" in which it had not previously been tried.) (There is no suggestion that once it was decided to try the reaction in "the liquid phase", there were difficulties encountered in accomplishing the reaction in the "liquid phase" that could only be overcome by "inventive ingenuity".)
Such is not the situation in this case. Again, in this case, the prior art at the time of the invention did not disclose the starting material which it was necessary to use to make trifluralin. Soper had to make a choice out of a selection of thousands of possible starting materials. He chose (and it would not have been obvious to a person skilled in the art to choose) the starting material that Yagupol'skii taught how to make. Soper chose that starting material because he had decided to make the compound later called trifluralin, which compound he later found to have the herbicidal functions desired.
"...Safe's approach in the determination of whether or not the alleged invention was obvious is an attempt to convert hindsight judgment into foresight judgment. As has been said, 20-20 hindsight is a common commodity."
At p. 36
As the evidence indicates, commercial success of trifluralin has been outstanding and Eli Lilly has obtained a substantial percentage of the total market with the invented product trifluralin. This success and percentage has not been due primarily to extensive advertising or packaging or cosmetic effects of the product such as colour, packaging or price."
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