Case: Pfizer-Overseas Pharmaceuticals v Eli Lilly &amp; Co [2005] FCAFC 224
Outcome: followed
This test calls for consideration of whether the prior disclosure incorporates all of the integers of any of the claims: see Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 at [128] - [152] . That is, the prior disclosure must reveal the totality of the invention and the antecedent information and must be such that a person of ordinary knowledge of the subject would perceive, understand and be able to practically apply the invention without needing to do experiments or obtain further information before the invention can be made useful: see Hill v Evans (1862) 4 De GF &amp; J 288 per Lord Westbury LC; Olin Corporation v Super Cartridge &amp; Co Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236 at 261 per Stephen and Mason JJ. In other words, the principal issue is whether the content and effect of the claimed anticipation is sufficient to destroy the element of novelty in the invention: see Pfizer-Overseas Pharmaceuticals v Eli Lilly &amp; Co [2005] FCAFC 224 at [311] - [324] . 92 Of particular importance is whether the disclosure has been sufficiently clear. That is, the disclosure must contain clear and unmistakable instructions as to how to use the claimed invention: see Pfizer Overseas Pharmaceuticals v Eli Lilly &amp; Co [2005] FCAFC 224 at [314] ; Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 at [140] and [153]. In documentary anticipations, the insistence upon clear and unmistakable instructions does not require the equivalence of language between the claimed invention and the disclosure. What matters is what is taught by the material: Evans Medical Ltd's Patent [1998] RPC 517 at 576 per Laddie J. 151 At the outset, it is necessary to describe the attributes of the skilled addressee and the relevant patent area. The skilled addressee is a legal construct and is assumed to be a person, or team, who is "not 'particularly imaginative or inventive'": Pfizer Overseas Pharmaceuticals v Eli Lilly and Co [2005] FCAFC 224 at [288] per French and Lindgren JJ. This does not mean that the addressee is a technician or person with only practical and non-academic qualifications. In fields such as chemistry, the addressee can be a person or group with high level qualifications and a capacity for original research: Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 ; (2002) 212 CLR 411 at [30] . The test formulated by the majority in Alphapharm at [53]-[54] is whether the addressee would directly be led, as a matter of course, to pursue one avenue in the expectation that it may well produce the claimed result. Their Honours referred to the approach taken by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboraties Ltd [1970] RPC 157 at 187-188. His Honour framed the question in terms of whether a notional research group, at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of a chemical, would be led directly as a matter of course to try a particular substitution in the expectation that it might well produce a useful alternative to, or better drug than, the existing drug or a body useful for any other purpose.