Gary Cox v Abbott Laboratories - [2015] APO 84

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Gary Cox v Abbott Laboratories [2015] APO 84

Patent Application: 2006306366 and 2011218634

Title:Infant formulas containing docosahexaenoic acid and lutein

Patent Applicant:  Abbott Laboratories
Opponent:  Gary Cox
Delegate:  Keith Wagg
Decision Date:  7 December 2015
Hearing Date:  13 and 14 of May 2015 in Canberra, with further evidence and submissions completed on 26 August 2015

Catchwords: PATENTS – opposition to grant of parent and divisional – claims are clear – lutein refers to a specific carotenoid and does not include zeaxanthin – infant formula on a ready to feed basis – calculation of concentration of lutein in powdered formula disclosed in prior art not within the scope of claims when calculated on a ready to feed basis – claims are novel – common general knowledge – totality of the claimed invention involves an inventive step over the common general knowledge – when the common general knowledge is combined with the cited prior art it has not been established that the person skilled in the art would be directly led as a matter of course to the claimed invention – inutility not established – insufficiency not established – claims are fairly based.

Representation: Patent applicant: Katrina Howard, SC instructed by Shahnaz Irani of Spruson and Ferguson
Opponent: Julian Cooke of Counsel instructed by Linda Kennaugh of Wrays, Gary Cox also appeared.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006306366 and 2011218634

Title:Infant formulas containing docosahexaenoic acid and lutein

Patent Applicant: Abbott Laboratories
Date of Decision: 7 December 2015
DECISION
I allow the amendment to the Statement of Grounds and Particulars.
The opposition fails on all grounds. Subject to appeal, I direct 2006306366 and 2011218634 to proceed to grant.
Costs are awarded against Gary Cox.
REASONS FOR DECISION
Background

Patent application number 2006306366 (‘366) in the name of Abbott Laboratories (the applicant) was advertised as accepted by the Commissioner on 12 May 2011. A subsequent patent application, 2011218634 (‘634), was filed on 29 August 2011 with the patent request claiming divisional status from ‘366. On 12 August 2011 a notice of opposition to the grant of ‘366 was filed by Gary Cox (the opponent). On 20 June 2013 the ‘634 application was advertised as accepted by the Commissioner and a notice of opposition filed by the Gary Cox on 20 September 2013. Both of the oppositions were heard together.
The request for examination for both of these applications was filed prior to 15 April 2013. As a consequence, substantive amendments of the Patents Act 1990 brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present patent applications. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists. I also note that any subsequent reference to the Patents Act relates to the Patents Act1990, prior to amendment by the

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2015] APO 84
Decision Date: 7 December 2015

CaseChat Overview and Summary

This case concerns two patent applications filed by Abbott Laboratories, an American corporation that formulates infant formulas. Gary Cox opposed the grant of two of Abbott Laboratories' patent applications, 2006306366 and 2011218634. The patents are related to infant formulas containing docosahexaenoic acid and lutein, which are intended to promote retinal health and vision development in infants. The opposition was heard over two days in May 2015, with further evidence and submissions filed in August 2015. The delegate of the Commissioner of Patents, Keith Wagg, found that the opposition failed on all grounds. The patents were directed to proceed to grant, subject to appeal, and costs were awarded against Gary Cox.

The opposition was based on eight grounds: that the claims were not a manner of manufacture; lacked novelty; lacked an inventive step; lacked utility; were not fully described; were not clear; were not fairly based; and were insufficient. The delegate found that the claims were clear and that the invention was novel and involved an inventive step. The invention was also found to be useful and fully described and fairly based. The opposition also failed on the grounds of being a manner of manufacture and sufficiency. The delegate held that the opposition failed on all grounds and directed that the applications proceed to grant, subject to appeal. Costs were awarded against Gary Cox.

Orders