Case: Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139 
Outcome: referred to
In my view, the inventive step is not to be judged on the basis that either PCR 4099 or the dextro-rotatory enantiomer of it is the starting point. It may seem anomalous that the major compound might be obvious because of the statements in the specification in suit but that salts of it are not. However, the salts are novel without any special consideration as selection patents. To take the specification in suit into account in this way to judge the obviousness of these claims would have to be based upon a general principle, not restricted to selection patents. There is much to be said for the view that a patentee should be held to the advance in the art identified in the specification for the purposes of judging whether there is an inventive step. Put another way, the contents of the specification in suit would be taken into account in identifying the inventive step for the purposes of judging obviousness. However, no authority was cited that directly establishes such a principle. Even application of it to selection patents is doubtful. A similar issue arose in the recent Full Court decision in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139 in connection with a mechanical invention under the 1990 Act. To the extent that the decision has any application to these cases, it tends against the applicants' contention as to the use that can be made of statements in the specification in suit as to the inventive step, although the reasoning is not altogether clear (see Insta Image Pty Ltd [2008] FCAFC 139 at [38] [61] and [80] [115]). The applicants' contention is a step too far for a single judge. It follows that claims 2 5 do represent an inventive step compared with common general knowledge in Australia at the time. 113 If the inventive step were identified as having the single enantiomer of clopidogrel as the starting point, I would have held that each salt claimed was obvious. It was known that a pharmaceutically acceptable salt was useful for administration of an active compound. It was known how to prepare such salts using known mineral or organic acids. The acids chosen here hydrochloric acid sulfuric acid, hydrobromic acid and taurocholic acid were conventional. They were (with the exception of taurocholic acid) the acids utilised in relation to the salts of PCR 4099 in the French patent. Standard methods of preparation of the salts were known. 114 Claim 6 is the principal process claim. It describes in a general way the process of liberating the dextro-rotatory enantiomer from the racemic compound PCR 4099 by means of diastereomeric salt formation. The desire to obtain the dextro-rotatory enantiomer of the racemic compound is taken for granted. The claim does not relate to that choice; it relates only to the means of doing so. Novelty lies in the fact that no prior art discloses the use of that process in relation to that particular compound to obtain that particular enantiomer. That method was well-known in the field in Australia at the priority date as a classic means of obtaining the enantiomers of a racemic compound. What the specification in suit discloses is that the classic method worked in this case. The patentee sought to establish, principally through Mr Badorc, firstly, that the method did not always work in relation to particular compounds and, secondly, that the application of the method in this case required choices to be made in the light of difficulties encountered in the course of carrying it out that were not standard, and were not obvious. A number of other methods of obtaining the enantiomers of a racemic compound were known at the priority date and it was also contended that the choice of one over the other was not obvious. 115 None of those contentions detract from the fact that claim 6 represents a classic process being applied to a known compound to produce the desired result. The relevance of Mr Badorc's evidence to the issue is doubtful at least. Even if admissible, in my opinion, the particular application of the method by Mr Badorc did not involve any inventive step. Mr Badorc's evidence of the steps he took by way of diastereomeric salt formation, leading to the successful experiment on 21 March 1986, was challenged in various respects, principally because of apparent discrepancies between that evidence and the contemporaneous records. His explanations were far from convincing. Even if his evidence is accepted, the steps he took were typical of the trial and error that was necessarily involved with the use of such a technique. Even if there were an inventive step in the particular application by Mr Badorc, claim 6 is not so limited. Each of the additional integers in claims 7, 8 and 9 was well-known in the field in Australia at the priority date and were available as part of the ordinary process of trial and error. They do not reflect any particular inventive step identified by Mr Badorc. 116 The fact that a process may not always work in particular circumstances and that there were other available alternatives does not establish that it was inventive to choose to use it. The choice of one known process over other known processes may be inventive in some circumstances perhaps where the received wisdom would point in the other direction or the result was unexpected. There were no such circumstances here. For the sake of completeness, I should say that there was no inventive step involved (or claimed) in ascertaining the pharmacological characteristics of the respective enantiomers.