Journal of Intellectual Property Law & Practice, 2009, Vol. 4, No.
6 383
Current Intelligence
Myoview in 1998, at which point senior executives
Patents stressed that the technology was patented and that patent
protection would last for a further 10 years. On a number
B A fair reward for inventors of other occasions, senior executives stressed the import-
Kelly & Chiu v GE Healthcare Ltd, [2009] EWHC 181 ance of patent protection to the success of their product,
(Pat) Patent Court, English High Court, 11 February 2009 especially as generic competition grew. The cumulative
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In a case concerning inventors’ compensation, the total of sales of Myoview from 2002 to 2007 was £964.9
Patents Court held that as the patent in question was of million. Amersham acknowledged that Myoview was from
outstanding benefit to the employer, it was just that its perspective a ‘blockbuster’ and that many of the deals
employees should receive a ‘fair share’ of the benefit to the company had achieved in the early 1990s had been as
the employer. No appeal has been filed. a result of the Myoview product.
Amersham sought to reduce the employees claim to a
nominal award only, on the basis that the inventors had
Legal context
been given a bonus at the time, and in the case of Kelly,
This was a claim by two inventors named in a patent promotion, and the recognition that the inventors had
application against their former employer in accordance received outside of Amersham. Amersham contended
with section 40 of the Patents Act 1977, on the basis that that, at most, the inventors should be awarded a bonus of
the patent was of outstanding benefit to the employer and 1 year’s salary in 1989 scaled up for inflation, ie a com-
it was just that the employees should receive a ‘fair share’ bined total of £160,000.
of the benefit to the employer.
The idea that inventors should share in the benefits
derived by the patent owner was first introduced into Analysis
English patent law in 1977 and this is the first successful In order to succeed in their claim, Kelly and Chiu had to
claim to be litigated under this section. Although the Act show first that the patents themselves (not the product)
was amended in 2005 to reduce the threshold for had been of ‘outstanding benefit’ to their employer and
making claims, this case was decided on the law prior to second that it was just to make an award to them. In
amendment. relation to the former, they pointed to speeches and pre-
sentations made by company executives in the 1990s
Facts which stressed that Myoview was a patented product and
Kelly and Chiu were research scientists employed by by drawing attention to the fact that the company was
Amersham International (‘Amersham’). They were able to hold off competition after the expiry of the
involved in the creation of a compound which formed the regulatory data exclusivity period, which it would not
basis of a patented radioactive imaging agent which, otherwise have been able to do.
under the trade mark Myoview, was a highly successful Although the meaning of ‘outstanding benefit’ is not
product for Amersham. Since creating the product defined in the statute, the court accepted that the benefit
Amersham was taken over by General Electric Company, the company received was not limited to profits from
now GE Healthcare (‘GE’). sales but also extended to corporate deals that the
The claim focused on two patent families claiming company achieved, which helped to transform its
priority from 1987 and 1988 in which three employees business. The court held that the benefit of the patents
(including Kelly and Chiu) were named as inventors (a was about £50 million and it therefore had no difficulty
third employee decided not to join in the action). Two in finding that this equated to an ‘outstanding benefit’.
other people were also named as inventors in the patents. In assessing whether it was just to make an award to
However, since they were not employees at the time, they the employees, the court had to consider what a ‘fair
could not be party to the proceedings. share’ of the benefit to the employer would be in
Regulatory approval of Myoview was granted in Europe accordance with section 41. The statute gives no gui-
in 1993; the product was launched in the UK in 1994 and dance as to what might be considered a ‘fair share’
in the USA in 1996. R & D expenditure was covered by although it does list in section 41(d) a number of
the profits generated from the gross margin in the first things that need to be taken into account including the
year of product launch. Amersham was awarded a nature of the duties of the employee, the effort and
Queen’s Award for Technological Achievement for skill devoted by the employees to making the invention,
# The Authors (2009). Published by Oxford University Press. All rights reserved.
384 CURRENT INTELLIGENCE Journal of Intellectual Property Law & Practice, 2009, Vol. 4, No. 6
the contribution made by the employer, the remunera- B Secondary considerations of non-
tion received by the employee or other advantages obviousness must still be considered
derived from his employment, or as a consequence of
his invention. While the court recognized the value of Süd-Chemie, Inc. v Multisorb Technologies, Inc., S54 F.3d
the opportunity provided by the employer and the 1001, US Court of Appeals for the Federal Circuit, 30
efforts made by the employer to develop the market for January 2009
the product, the employees had used a high level of A US District Court erred in granting summary judg-
skill and effort and the R & D costs were extremely ment of obviousness and in failing to consider second-
small. ary considerations of non-obviousness.
The judge found that, as a matter of principle, the
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Legal context
employee’s share of the value of a patent might lie
somewhere between nil and 33 per cent, or beyond but In 2007, the US Supreme Court in KSR International Co.
that, in the present case, the share lay towards the v Teleflex Inc., 550 US 398 (2007) rewrote two decades of
bottom of the scale. Taking what was expressed to be a jurisprudence by the US Court of Appeals for the Federal
conservative approach, the judge awarded the claimants Circuit (‘Federal Circuit’) on the law of obviousness.
a total of 3 per cent (2 per cent for Kelly and 1 per Before KSR the Federal Circuit required that, in order to
cent for Chiu) of the benefits as a ‘just and fair’ award. demonstrate that two or more references can be com-
These figures represented about 0.1 per cent of turnover bined, there must be some teaching, suggestion, or motiv-
and equated to £1 million for Kelly and £500,000 ation to combine prior art elements to render a claim
for Chiu. obvious (see eg In re Kahn, 441 F.3d 977, 986 (Fed. Cir.
2006); In re Fulton, 391 F.3d 1195, 1200-01 (Fed. Cir.
2004)). The US Supreme Court in KSR rejected this
Practical significance
‘rigid’ test, and instead now looks for a more global
The fact that an employee was able to succeed in this understanding of the hypothetical artisan of ordinary skill
action against an employer 20 years after the patents having knowledge of all the relevant prior art, problems,
were filed is of concern to research-based companies and unresolved needs in the field.
because they must now take account of this risk and Since KSR, and, in particular, over the past few months,
make financial provision for it. A successful claim of the Federal Circuit has found numerous patents invalid as
this kind inevitably will give succour to other inventors obvious despite district court or jury verdicts findings to
who feel that they have not received the recognition to the contrary. In each of these instances, the Federal
which they feel entitled, although their main obstacle Circuit discounted the trial court and fact finder’s reliance
will be finding the funding with which to initiate such on secondary considerations of non-obviousness (see eg
a claim. The changes introduced in Patents Act 2004 Ball Aerosol & Specialty Container, Inc. v Limited Brands,
have made it easier to bring claims and potentially Inc., S55 F.3d 984, 994 (Fed. Cir. 2009); Boston Scientific
increase the value of awards, since the share of the Scimed, Inc. v Cordis Corp., No. 2008-1073, 2009 US App.
benefit to which the employee inventor will be entitled LEXIS 588, at *25 – *26 (Fed. Cir. 15 January 2009)
will not be limited to that of the patent but rather that Sundance Inc. v Demonte Fabricating, Ltd, 550 F.3d 1356,
of the invention itself. 1368 (Fed. Cir. 24 December 2008).
The case raises more questions than it answers regard- In Süd-Chemie, the District Court found the patent-in-
ing the calculation of the value of the benefit derived by suit invalid as obvious on a motion for summary judg-
the company and the proportion to be shared with the ment. The Federal Circuit reviewed this decision.
inventors. Research-based companies need to factor in the
need to share with their employee inventors on an equi- Facts
table basis the benefits attributable to outstanding Süd-Chemie owned US patent 5,743,942 (‘the ’942 patent’)
products. which was directed to a desiccant container that was
permeable to water vapour, but not to liquids. The
Belinda Isaac claimed desiccant container consisted of two films: (i) a
Isaac & Co microporous film and (ii) a laminate film. The two films
Email: belinda.isaac@isaacandco.com were heat-sealed to each other around the edges to form a
closed container for the desiccant material placed within.
doi:10.1093/jiplp/jpp054 Süd-Chemie made commercial desiccant containers
Advance Access Publication 22 April 2009 covered by the ’942 patent.
