Wragge & Co Patent Seminar 2009

Introduction

Rather to the surprise of those who heard my talk or read my paper last year, I concluded with the following paragraph:

"All in all, we are in good shape. We have an excellent team of judges at first instance, and all the way up to the House of Lords, where we now have Lord Hoffmann and Lord Neuberger, we are well served by experienced commercially minded judges who finally have accepted the significance of our patent jurisdiction, and acknowledged its context within the European Patent Convention".

Things have moved very fast indeed over the last few years and it was perhaps inevitable that we were due a year of "consolidation". That is what we appear to have had, though not without points of interest along the way.

Perhaps, after many years of doing this, it would be an appropriate moment to stop and, in this introductory phase, give a quick recap of the recent big decisions on the main patent issues.

Construction

The House of Lords (as it was then called) set out its views on how to read a patent a couple of years ago in the Kirin Amgen case, which has been slightly evolved by a couple of subsequent decisions. Surely that is the last word on how to read patents?

Costs

In Generics v Lundbeck it was made clear that the costs go to the winner, with some reduction where particular issues have been lost. This is done with something of a broad brush, and a detailed semantic analysis "issue by issue" is generally avoided.

Anticipation

In the Synthon case we had the definitive statement on the law of anticipation from the House of Lords, with Lord Hoffmann stating that enabling disclosure is a compendious summary of two distinct statutory requirements: disclosure and enablement.

Obviousness

Last year the House of Lords reversed years of encroachment into the territory of patentees by the law of obviousness with its ground- breaking decision in Conor v Angiotech. The Lords ruled that "it is the claimed invention that has to involve an inventive step", rather than too much time being spent on the specification and drawings.

Insufficiency

Just in case the case did not get any further, Lord Hoffmann took the trouble to descend to the Court of Appeal last year in Generics v Lundbeck to clarify his position in relation to insufficiency saying "in an ordinary product claim, the product is the invention ."

Patentable Subject Matter

Last year the Court of Appeal in Aerotel and Symbian sought to clarify the position, particularly in relation to the patentability of software, with a four part test which has been supported repeatedly since.

So that is a pocket picture of where we have got to at the moment. What has happened in 2009 to move our thinking on, or to clarify any of these issues still further?

I will, as usual, adopt the structure of dealing first with infringement related issues, then validity, and finishing with technical aspects.

Infringement

Construction

As I have indicated above, one would have thought that the Kirin Amgen decision, as slightly amended by further consideration, would have been the final word on how to read a patent. Not so, according to Lord Justice Jacob.

The case of Virgin v Premium has gone through both the High Court and the Court of Appeal in the last 12 months. In the High Court, Mr Justice Lewison found that the Virgin patent was valid, but that it was not infringed, and further that, were his construction wrong and infringement had taken place, then the patent would fall for added matter. The case was then referred to the Court of Appeal.

The case concerns a Virgin patent in which the only embodiment described was that which is commonly seen in Virgin aircraft as the "upper class suite" namely a seat which "flips over" to provide a flat bed, without the disadvantage of contours in the seat on the side which is designed for actually sitting in. Mr Justice Lewison found that the patent in suit described the flip-over seat, and as the Premium seat did not "flip over" it could not constitute an infringement. Virgin argued that in fact the flip over aspect of the design was to be found elsewhere, in another patent, and that one had to look very closely at this patent to find the real invention, which was an extension of the seat into space created by a herringbone pattern down the side of a plane. Lewison J found that the skilled reader would find an invention in the flip over. The Court of Appeal disagreed.

The judgment of the Court of Appeal is stated to be a judgment of the Court, with no individual judge named, but the writing style leaves little doubt as to who wrote it!

It identifies a series of matters which it claims need to be resolved in order for the case to be decided. The first relates to the use of numerals to refer to the drawings in the patent in a patent claim. The Court of Appeal asked itself the question: "does the skilled reader take into account that the patentee, when putting numerals into his claim, knew that they would not be used by the skilled reader to limit his claim?"

The second question relates to the "two part" nature of the claim with pre-characterising and characterising parts. The Court of Appeal asked itself "does the skilled reader when he sees such a two part claim expect the pre-characterising portion to describe matter which is part of the prior-art?"

Finally, the Court of Appeal asked whether the skilled reader would be familiar with the practice of divisional applications. In this case, the patent in suit is a divisional of a parent patent which is broad in its scope. The Court of Appeal indicated that if the skilled reader does know about the divisional system, that may affect his understanding of the claims because he will know that aspects of what is described in the patent are, or may be, actually claimed in some other patent, or in patents divided out from the original application.

The Court ruled that the answer to these questions lay within the Kirin Amgen decision itself. The passages from Lord Hoffmann's judgment which it sought to rely on to support this were short extracts from paragraphs 33 and 34 of the judgment where Lord Hoffmann says that the skilled reader would:

"read the specification on the assumption that its purpose is to both describe and demarcate an invention - a practical idea which the patentee has had for a new product or process,"

and:

"it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new ."

Following the recital of those passages, the Court of Appeal's judgment immediately says:

"so the skilled reader is taken to suppose that the patentee knew some patent law - that his claim is for the purpose of defining the monopoly and that it should be for something new ."

This represents a very interesting leap of judgment. I doubt if I am alone in finding it hard to read from the passages quoted from Kirin Amgen any suggestion that the skilled reader knew some patent law. This might be considered particularly unusual given that the authority for supporting this proposition is stated to be the views of Lord Hoffmann. It is informative to consider what Lord Hoffmann has actually had to say on the subject.

In Improver v Remington, as a first instance judge, he said:

"I do not think that the hypothetical skilled man is also assumed to be skilled in patent law and he would in my judgment be entitled to think that the patentee had good reasons for limiting himself, as he obviously appeared to have done..."

Then in Kirin Amgen itself, he said that "life is too short" for the limited assistance which can be provided by making any reference to the patent office file. The idea that the skilled person should be busying himself making enquiries of patent law is clearly contrary to the general teaching of the Kirin Amgen case, and indeed all previous jurisprudence.

The Court of Appeal is, however, adamant on the subject saying:

"we think it would be unrealistic - indeed perverse - for the law to say that the notional skilled reader, probably with the benefit of skilled advice, would not know and take into account the explicit drafting conventions by which the patent and its claims were framed".

It went on to conclude:

"a real skilled man reading a patent which, as in the case of the Patent refers to "the parent application" would surely say "what's a parent application?" - and he would go on to ask a man who knows, probably a patent agent ."

Leaving aside the Court of Appeal's slight lapse in terminology, it is indeed an interesting notion that, from now on, the "skilled team" will always include a patent attorney to explain patent law and to talk the skilled person through the complexities of divisionals etc. All previous reasoning on this point had been based on the premise that the patent stands on its own, even after it has been carved out as a divisional, and must be read as such. It says what it says, and one should not look for meaning to the file which lies behind it. The very basis of the Kirin Amgen decision was that the patentee and his advisors have the entire lexicon of the English language at their disposal to say what they mean, and must accordingly be thought to have done so.

The Supreme Court will doubtless be petitioned to see whether this extension of the Kirin Amgen principle is really correct.

Just to complete the responses to the questions the Court of Appeal posed itself, it concluded that "in particular we do not think that numerals should influence the construction of the claim at all - they do not illustrate whether the inventor intended a wide or narrow meaning".

This is also new law. Anecdotally, I am led to believe that one first instance judge has already gone away to rewrite a judgment on the basis of this finding. Further, in the case of Boegli-Gravures SA -v- Darsail-ASP Ltd where judgment was handed down by Arnold J only last week, there is a specific reference to this new development.

In Novartis v Dexcel, Mr Justice Arnold had to decide the sole issue of whether the defendant's product, Deximune, infringed the claimant's patent. The subject matter of this case had previously been considered by the courts. I do not propose to go into detail about the facts of the case. Arnold J clearly thought that the key issue was the purpose of the claim. He quoted Lord Justice Jacob in Ivax where he said:

"The answer to the problem is found, as it so often is when construing a patent claim, by asking: what is the claim element for?"

Arnold J expresses his approval of this approach saying:

"in my judgment Dexcel's construction is flawed because it is based on linguistic analysis rather than consideration of the technical purpose of the elements of the claim".

He goes on to say that if one takes a purely linguistic approach to it "this claim is technical nonsense".

In Ancon v ACS the Court of Appeal had to deal with the issue of what constitutes a "generally elliptical cone shape ."

The case concerns a method of building construction entitled "channel assembly" which usually involves a metal channel, cast into the concrete structure of a building. The channel has shaped sides with an open aperture at its face into which the head of a bolt could be inserted. Claim 1 of the patent encapsulated the channel and its shape together with the bolt head with inclined sides and a "generally elliptical cone shape". The Kirin Amgen approach to construction was specifically approved (as it always is) and the Court of Appeal went on to say:

"to gain an idea of what a skilled reader would have understood the patentee to convey by "generally elliptical cone" one needs to think like him. He would know about the prior art bolts and channels. He would know that bolts had been square headed and rectangular headed, fitted into the kind of rectangular cross-section channel shown in the patent".

But Lord Justice Jacob went on to say:

"the skilled man, in considering what a patentee meant by any specified feature will have regard to that purpose. So he would see that the purpose of the shape is to achieve the camming action into the corners of the channel".

In finding that Patten J had erred in construction, Lord Justice Jacob quoted the method of reasoning which Patten J adopted where he had said:

"it is, however, clear from this that the phrase "generally elliptical cone shape" is used to describe shapes, all of which retain the essential feature of an ellipse. In the context of the specification as a whole it can have no other meaning".

Lord Justice Jacob thought that was wrong and sought to correct it saying:

"the error was in saying that the shapes shown in the patent all "retain the essential feature of an ellipse". They do not in any relevantly technical sense, if by "feature of an ellipse" one means a complete oval shape. For, unlike "Brighton Rock", a seaside candy, the oval shape does not run through what is shown: save for very close to the top, the cross-sections are not complete ovals - they have the vestiges of an oval ."

Faced with the possibility of defeat, the Counsel for Ancon "tentatively advanced a further argument". This was that, even if the claim was properly construed so that it did not cover the ACS assembly, there was infringement nonetheless by virtue of the amendments made to Article 69 of the EPC and its protocol in 2000. What they were effectively arguing, and this is the first time I have seen it in a reported case, was that the introduction of the notion of "equivalence" could materially affect the outcome of the case such as this. Lord Justice Jacob fired a shot across their bows saying:

"In the event it is not necessary to consider this argument. All I would say is that it has considerable difficulties both because our House of Lords has indicated it makes no difference (see Kirin Amgen) and because a trawl through the travaux préparatoires to the EPC 2000 does not show a clear intention to change the law ."

Far be it from me to correct his lordship, but the UK delegation to the conference at which the decision was made described the insertion of "equivalence" as "an interesting proposal which consisted of a radical change to the legal position in the United Kingdom". Clearly not in the eyes of Lord Justice Jacob, nor, it is fair to say in those of Lord Hoffmann.

In Cranway v Playtech Lewison J had to deal with the issue of online "gaming", and whether a claim was limited to gambling with real money. If that were the case, it may be valid; if not, it was hopelessly anticipated by prior-art, including many computer games.

The party seeking to limit the claim to gambling with real money wanted to paint the most complex picture possible and proposed that the skilled person might be a highly skilled mathematician and/or a casino operator. Mr Justice Lewison disagreed entirely, saying that the skilled person was no more than a computer software engineer. Wearing the mantle of such a skilled person he concluded:

"I have consistently put the phrasing "real money" in inverted commas, because I have found it difficult to understand precisely what this means. After all, games played in a casino are played with worthless chips, and it is only by a collateral agreement between the player and the casino that they are exchangeable for "real money". Many people play Bridge for points; and sometimes by agreement between the players they ascribe monetary value to the points. What if the system were used for gaming with air miles or nectar points?...The value attributable to something outside the game is a matter of agreement or convention outside the game; and the patent in suit teaches nothing about that".

Accordingly, the patent fell.

I have, for some years, had cause to ponder the use of words like "preset" and "predetermined" in patents. It has always been a source of some consternation as to what they can mean. Peter Prescott QC, sitting as a deputy judge, addressed the issue in the case of Folding Attic Stairs v The Loft Stairs Company.

The case concerned ladders to access roof voids. The construction point concerned the phrase "spaced a pre set distance" in the patent claim.

Peter Prescott said:

"I must say I have seen "pre determined" and "pre set" in granted patent claims on occasions too numerous to recall..."

He said that he had searched the United States Patent Office, where the text of claims granted since 1975 is searchable electronically. Whilst he expected to find many patents with the word "pre determined" in one or more claims, he was astonished to find there were in fact around 658,000 such patents!

Peter Prescott QC was reluctant to find that these words were "meaningless and of no effect", but equally could see the potential difficulties arising. In the case of the invention in this case, it would mean that a third party manufacturer would need to know the attributes of the person using the stairs before knowing whether he infringed or not. This, the judge thought, went beyond the "reasonable certainty" which was a requirement under Article 69 of the European Patent Convention.
He concluded:

"there is an old prejudice or tradition in patent law that words of intent should not be used in patent claims. It was said to go back to the early nineteenth century, but whether that is the law now under the 1977 Act and the European Patent Convention must be questionable".

He went on to say that the words "pre determined" or "pre set" have long been used by patent draftsmen for the purpose of indicating intentionality, albeit rather covertly. He failed to understand why they did not admit it openly.

In Zeno v BSM Lewison J had to conjure with a case regarding a patent for a method for applying heat to the skin, which might either treat acne, or insect bites!

The claimants patented and manufactured a hand-held battery operated device which was used for the treatment of acne by the application of heat to the skin. An earlier patent registered by a third party which used as an "itch stopper" and also worked by the application of heat to the skin. The case effectively turned on the well known "old chestnut" of patent law, namely the meaning of the word "for" and in particular its extension to mean "suitable for". Lewison J commented:

"despite my own doubts, and in view of the common ground, I will assume that the Emperor is clothed and apply the received wisdom that "for" purpose means "suitable for" that purpose. In this case the specified purpose is the "local thermal treatment" of insect stings and bites."

However, that was not an end to the issue. He went on to say:

"However, that still leaves the question: if the manufacturer of a product not designed or intended to be used for the specified purpose, how does one judge whether it is "suitable" for use for that purpose? Is it simply a question of whether something is capable of being used for a specified purpose? After all, Terrell is capable of being used as a door stop or a paperweight; and a popular cartoon book of a few years ago was entitled "101 uses for a dead cat". Was it "suitable" for all those uses?"

After some further speculation he concluded:

"I therefore accept a device "for...treatment" must be capable of having some real beneficial effect on the symptoms experienced by one who has been bitten or stung by an insect, but I do not consider that it matters why it works."

In Occlutech v Aga Mr Justice Mann had to deal with yet more medical stents.

As usual the Kirin Amgen approach to construction was specifically approved, this time with the added reference to another judgment of Lord Hoffmann, this time in the Court of Appeal, in STEP v Emson Europe where he set:

"the well known principle that patent claims are given a purposive construction does not mean that an integer can be treated as struck out if it does not appear to make any difference to the inventive concept. It may have some other purpose buried in the prior art and even if this is not discernable, the patentee may have had some reason of his own for introducing it."

Armed with that in mind, Mr Justice Mann set out to describe his own principles for patent construction saying:

"From those extracts I discern and apply the following principles:

1. the language of the patent is the starting point and is critical though not finally determinative;
2. if there is a conventional meaning of a word or expression, either in the eyes of the skilled team, or in everyday language if the words have no special meaning to the team, then a conclusion that it has some unconventional meaning requires a rational basis;
3. even if a given limitation looks odd, in the sense that one cannot see why the patentee would have included it, there may nevertheless be an undisclosed reason for that oddity and one cannot assume that the oddity is unintended and betokens an unconventional meaning for words, or that the limitation should be disregarded."

I am not sure that that adds much to the understanding of patent construction following Kirin Amgen, but it would be fair to say that it is correct in all respects.
The case in the end turned on the meaning of the word "clamps". The patentee sought to assert that the patent had made a "dictionary definition" of the specification and the word "clamp" embraced a series of alternative disclosed methods of securing the ends of the strands. Mann J disagreed. He said:

"he has referred to clamps, and then referred to alternatives to clamps. I do not understand how this amounts to defining clamps to include those other "not clamps" (as it were)."

Accordingly, he concluded:

"I therefore find that clamps means clamps - that is to say it connotes fixing the strands together by means of an object which exerts a physical fixing and binding force on the strands of the fabric so that they do not unravel."

As an aside, this is a case which had been the subject of litigation in Germany and the Netherlands. The Dutch Court found in the same way as Mann J, and the German Court found completely the opposite! Mann J takes the trouble to address both decisions, and in particular the German decision, before concluding they got it wrong.

For the most part, the tenets of construction in this country are now well established, and based on the House of Lords decision in the Kirin Amgen case.

However, the Court of Appeal decision in Virgin v Premium undoubtedly extends those rules of construction, and it will be interesting to see whether the Supreme Court is willing to review or confirm that significant extension. It is hard to speculate precisely what the implications would be of including patent attorneys on most skilled teams, but they must be quite far reaching, if we are to attribute to the skilled person detailed knowledge of all aspects of patent law and practice. There are no half measures. One cannot say that the skilled person knows some law but not detailed law. Either he knows the law or he does not. To say otherwise would be akin to describing a corpse as "a bit dead".

Defences

1. Experimental use
   In the case of Core Valve v Edwards Peter Prescott QC, sitting as a Deputy Judge, had to consider the question of the "experimental use" defence. The gist of the defence was that Core Valve does not supply its product to all comers, but only to selected hospital sites in Europe. This is part of a substantial clinical programme, an important feature of which is that cardiologists are carefully trained in the use of the product, and then train others. Peter Prescott described this as "a sort of pyramid apprenticeship scheme". The main purpose of the scheme is to help establish confidence in the products, which in turn will help them commercially. Core Valve do not supply their products for the scheme for nothing. On the contrary, they invoice a substantial amount for each unit.
   
   Peter Prescott reminded us that:
   
   "it is well settled that mere field trials which are intended to demonstrate the efficacy of the product for the purposes of regulatory approval do not qualify for the [experimental use] exception. In general, the purpose of this defence is to encourage scientific research while protecting the legitimate interests of the patentee."
   
   It was put to the judge that the mere fact that the purpose of the defendant is commercial effectively rebuts the statutory defence. He did not agree with that assertion. As he said "most pharmaceutical research organisations are commercial". However, he did note that it was an immediate and present purpose of Core Valve to generate revenue.
   
   He concluded that, on the basis of the evidence in this case:
   
   "I would hold that Core Valve's purposes are three fold: (1) to establish confidence in their product within the relevant market; (2) to generate immediate revenue of a substantial character; and (3) to gain information about clinical indications and, possibly, future modifications to be made to the physical structure of the device in the light of experience."
   
   He did not find that purpose (3) was the preponderant purpose, and accordingly found that the acts were not done "for experimental purposes" and consequently did not fall within the defence.
   
2. Liability for Infringing Acts
   
   In Perini v PCMC and Others, Floyd J was confronted with a tricky issue of liability.
   
   The allegedly infringing Rotoseal machines were purchased from PCMC Italia. The Sale Contract provided for delivery ex-works of the PCMC Italia factory in Italy. The importation of the machines into the UK was by LPC Limited. The machines were installed in LPC Limited's premises by PCMC Italia representatives. LPC Limited operates the machines and therefore clearly uses the method. Further, there is a company called PCMC (UK) which, it is alleged, was involved in the offer for sale or supply of the machine in the UK.
   
   Floyd J found initially that the infringing act of selling or offering for sale could not have been committed by PCMC (UK) which, at most, assisted PCMC Italia to conclude the Contract to supply the machine in Italy. That, he felt, was "not enough" to fix PCMC (UK) with liability for an infringing act in the United Kingdom.
   The machine was installed as "big chunks" in the United Kingdom which, the judge found, would be adequate to amount to the making of the machine by PCMC Italia in the United Kingdom. However, the patent's claims which were found to have been infringed were method claims. He said that there was no particularised allegation that PCMC Italia had ever used the machine and therefore used the method of the relevant claims in the UK.
   
   Perini alleged that the various acts complained of were effectively committed pursuant to a common design between all the defendants. This would make PCMC Italia and LPC Limited jointly liable as "joint tortfeasors" for an act of primary infringement.
   
   Acknowledging that it is clearly stated law that the underlying concept for joint tortfeasorship must be that the joint tortfeasors have been so involved in the commission of the tort as to make themselves liable for the tort, the judge concluded that such co-operation had indeed taken place. He said that PCMC Italia, having built the machine on LPC Limited's premises, and caused it to work in accordance with the method claims, were clearly involved in a common design, evidenced by the contract between the parties.
   
3. Costs
   
   In Novartis v Johnson & Johnson, Kitchin J had to wrestle with quite a complex costs dilemma. The claimant's patent was found invalid for insufficiency. However, the attacks for lack of novelty and obviousness failed. Further, the defendant would have infringed claims 1 and 24 of the patent, but not claims 8 or 11.
   
   The defendant submitted that this was an exceptional case and it would be appropriate to award them all of their costs even though they had lost a number of significant issues. The claimant recognised that they had failed, but submitted that the many issues on which they succeeded were sufficiently circumscribed for them to be dealt with separately. Indeed the claimant felt that there should be no order as to costs, since they had succeeded on so many of the issues in the case.
   
   Kitchin J reviewed the law, and the almost unfettered discretion which he had to decide the issue of costs. He reviewed a couple of decisions. In SmithKline Beecham v Apotex Lord Justice Jacob had said "an issue by issue approach is therefore one that should be applied so far as it reasonably can". Though he had gone on to say that it was not "the be all and end all".
   
   In Monsanto v Cargill Pumfrey J had said:
   
   "the Court is obliged to identify the overall winner of the proceedings. Among other things, the overall winner is likely (save in the most exceptional circumstances) to be entitled to payment of all his costs which are not or cannot be allocated to a particular issue. I shall refer to these as the general costs of the actions."
   
   Armed with those thoughts, Kitchin J went on to conclude that:
   
   "they (the issues) are, as I have said, sufficiently circumscribed to justify an issues based approach, but the circumstances are not such as to make it appropriate to make an adverse costs order in respect of them."
   
   At this point he appeared to lick the end of his finger, wave it in the air, and conclude that the defendants should be allowed 70% of their overall costs, to be taxed if not agreed.
   
   This is very much in line with the current vogue. Lip service is paid to an "issue by issue" approach, but in the end the judge takes a holistic look at the case, who won and who lost, and settles on a percentage deduction which seems just.
   
   It merely remains for me to note that, in seeking an interim payment, the defendants sought 50% of 70% which, they asserted, was £1.82 million. I will leave my readers to do the maths, but suffice to say that the spirit of RIM v Visto lives on!
   
   In Actavis v Novartis a similar approach to costs was taken, this time, the wet finger waving arrived at a figure of 45% of the costs to be assessed on a standard basis.
   
   In Laboratorios Almirall v Boehringer Ingelheim the Court was confronted with a difficult issue whereby both parties effectively had patents revoked. In considering whether there was an overall winner for costs purposes, it was necessary to consider whether the patents were of equal weight in the context of the litigation or whether one was historically and commercially more important than the other. It is not an exercise which one can imagine the courts undertaking with any great pleasure.

Validity

Anticipation

I have already dealt at some length with the construction issues arising in the case of Virgin v Premium. Once Lewison J's construction that the patent effectively was limited to the "flip over" was rejected, the Court of Appeal was left with a patent relating to a concept known as "space packing" whereby, as it reclines, a seat, turning itself into a flat bed, fills space behind the back of the seat so as to maximise the use of space when seats are arranged in a herringbone fashion.

The arrangement of seats in a herringbone fashion was certainly well-known, and the prior art cited was a British Airways patent. There, the seat was contained within a pod, but when the seat reclined, the back of the seat certainly moved backwards into additional space, albeit within the pod. The patent in suit only referred to the seat, in reclined mode, extending beyond the back of the seat in upright mode, and made no reference to a pod. However, it had cited the British Airways patent and referred to it in the pre-characterising portion of the claim.

This was enough for the Court of Appeal to conclude that the British Airways patent could not constitute anticipation saying,

"if the patentee not only acknowledges that a particular piece of prior art is old, but then has a pre-characterising clause which is fairly obviously based on it, the skilled reader will be even more strongly inclined to read that clause as intended to describe that old art."

The extension of reasoning from there was that the skilled person would look very hard to find an invention over and above the prior art referred to, and in this case, that meant that the patent had to be construed so that, to anticipate, the British Airways seat would have had to extend beyond the confines of its pod, - something which was practically impossible.

This is an interesting notion. When confronted with a thin invention, clearly the clever trick is to find the nearest prior art, refer to it in the pre-characterising portion, and then expect the skilled reader to search high and low for the extension which constitutes a patentable invention. Whilst it is certainly fair to say that the skilled person should be assumed to be reading a patent with a view to finding an invention, reference by the patentee to specific prior art hardly seems an appropriate starting place from which to conduct such a search.

Dyson v Samsung was a revocation action brought by Dyson in relation to two Samsung patents. In effect, the case ended up dealing with four patents, as Samsung sought to amend both patents to an extent which rendered them almost unrecognisable, whilst maintaining that the originals were also valid.
Arnold J, in one of his early cases, adopted the now standard approach from Synthon v SmithKline Beecham indicating that two requirements had to be satisfied:

"First, the prior art must disclose subject matter which, if performed, would necessarily infringe that claim.... Secondly, the prior art must disclose that subject matter sufficiently to enable the skilled addressee to perform it."

This was a case about disclosure rather than performance.

The prior art in question allowed some latitude, and gave options for how it should be performed. Arnold J recalled the words of Pumfrey J in Ranbaxy UK Limited v Warner Lambert:

"it is occasionally said that there cannot be clear and unmistakeable directions to do something which is described as optional. I do not agree: to describe the thing as optional is to describe the thing. It is rather like the disclosure of something as adjustable: it necessarily also discloses something that is not adjustable."

In this case, having satisfied the requirements for two stages of cyclones, the prior art then gave two options. One was to use third stage cyclones, and the other was to use a HEPA filter. The prior art does not indicate that the two alternatives would do the same job, and indeed that was not possible. However, they were independent options, and consequently the prior art expressly disclosed the option of three stages of cyclones and consequently anticipated the Samsung patents.
Floyd J decided the case of MMI Research v Cellxion. This was a case regarding the security of mobile phone communications from unauthorised tracking of users and tapping of their conversations. In fact, the patent described a method of breaking through GSM security so that the identification numbers of a mobile telephone could be used by law enforcement authorities. The unashamed title for the patent was:

"method for identifying a mobile phone user or for eavesdropping on outgoing calls".

Floyd J acknowledged the Synthon decision, emphasising that "the matter relied upon must have been made available to the public". He went on to say:

"it is sufficient to make a single document or other subject matter available to the public if it is made available to a single person who is free in law and equity to make use of it for himself."

He acknowledged that a communication encumbered with a duty of confidentiality could not have an invalidating effect, but emphasised that:

"a person is no less free in law and equity to make use of information if he decides autonomously to keep the information secret."

Accordingly, the duty of confidentiality must be externally imposed, rather than some unilateral decision of the recipient of the information.

He went on to say:

"where prior availability of a machine is relied upon, it is not enough simply to prove that the sale was made. It is necessary to go further and establish what information was made available by the sale, and compare that information with the requirements of the claim. If the prior use was uninformative as to those matters it will not count as an anticipation."

He emphasised that the burden of proving that matter was made available to the public lies with the party asserting the anticipation. In this case, the judge found that the sale of a machine was not necessarily capable of revealing to the skilled person how it would work, and consequently did not amount to disclosure. However, he did indicate that there had been no evidence on the point and that seems somewhat surprising.

An interesting aspect of the law of anticipation arose in the "Folding Attic Stairs"case, decided by Peter Prescott QC.

I have summarised the basis of the case earlier. It is a case regarding stairs which can be lowered from a roof void to provide easy access. After getting ISO accreditation for the stairs, the proprietor decided to publicise his invention as he thought it would impress architects, builders and so forth. For that purpose he invited the Irish minister for Trade and Tourism to attend the claimant's factory, and also invited a photographer from the Irish Times. At that point, he had not appreciated the significant benefits of the new design, and had not as yet applied for a patent.

The photographer was given free range to take photographs of whatever he wanted when he and the minister attended the factory in January 1996. The event was duly reported in the Irish Times, including several photographs, one of which showed the proprietor standing in front of a test unit. The issues arising were whether the photograph that was published in the Irish Times, or the disclosure of the test unit to the minister or the photographer themselves, constituted anticipation of the patent which was subsequently applied for.

The judge concluded that a photograph must be interpreted by a person skilled in the art. In fact, the judge felt that the skilled viewer would have discerned only that there was some kind of ladder, perhaps a folding ladder, but really no more detail than that. The photograph did not divulge the important point, namely that the invention related to varying the width of the inner frame according to the width of the outer frame. Accordingly, that limb of the argument failed.

Moving on to the potential disclosure to the photographer and the minister, the judge found as a matter of fact that the photographer could have gazed at parts of the prototype as much as he wanted and was free to do so. He said:

"so, for that matter, might the minister, although I believe he was in the main part of the factory at the time chatting to the employees - they were potential voters."

The judge also found as a matter of fact that no terms of confidentiality were imposed so that in law the photographer and the minister were free to impart to others whatever they perceived and were able to recall.

The judge concludes that they were not persons skilled in the art, and there is no evidence that they were interested in manufacturing folding attic stairs. He did not find as a matter of fact that they took any particular interest in the test unit. As the judge said:

"it is an interesting point, and not an easy one. In deciding it, I must bear in mind that a decision could cut both ways. The claimant would not be very pleased if some competitor had afterwards come up with the invention independently and patented it, yet the law said that what transpired on the day of the minister's visit could not be cited as prior disclosure."

However, he went on to find that there was no irrebuttable presumption of law that information that is capable of being perceived by persons who were on private premises is in fact perceived by them. Although neither the photographer nor the minister gave evidence, the judge concluded:

"on the balance of probabilities I would infer that if some officious person had stopped them on the way out and asked them to describe the test unit, it is unlikely that they would have been able to describe the presence of an inner frame with side beams spaced from the sides of the ladder. I say that because there is no reason why a normal human being, not interested in the manufacture of folding ladders, could care less."

Quite.

Obviousness

With tedious inevitability and notwithstanding the House of Lords decision in Conor v Angiotech the vast majority of cases this year concerned obviousness in some shape or form. But have we learned anything new?

In Armour v Leisuretech Arnold J had to decide a revocation claim with a separate action for infringement. It was accepted that if the patent was valid, the petitioner for revocation would be infringing.

There is a standard approach now to commencing a consideration of the law of obviousness in the English Courts. The first is to set out the restated Windsurfing test as established by Lord Justice Jacob in Pozzoli.

This is then followed by the passage from Kitchin J's judgment in Lundbeck v Generics which was specifically approved by Lord Hoffmann in Conor v Angiotech. The passage in question reads:

"the question of obviousness must be considered on the facts of each case. The Court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem, the patent addressee, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success."

If the courts could find some simple shorthand for those two passages, a great deal of paper and ink could be saved as they appear in pretty much every judgment.
A few years ago Lord Justice Jacob referred to the way in which the law of obviousness had evolved "doctrines and sub-doctrines". Despite an attempt at clarification by the House of Lords, those doctrines are still very much in evidence. For example, in the Armour case the judge was reminded by Counsel for Armour that what matters is whether or not the invention was technically obvious, not whether it was commercially obvious. Further, they pointed out that, if a particular route is an obvious one to take, it is not rendered any less obvious from a technical point of view merely because there a number and perhaps a large number of other obvious routes to take.

Counsel for Leisuretech on the other hand reminded the judge of three points. First, that an invention may perfectly and validly arise from investigating the prejudices of the prior art. Secondly, that the simplicity of an invention is not the same as obviousness and thirdly, with a nod to Lord Justice Jacob in Technip, that "the question of why was it not done before is always a powerful consideration when considering obviousness, particularly when all the components of a combination have been long and widely known ."

Notwithstanding that they scored three sub-doctrines to two, the patentee lost, and the patent was found to be obvious.

In Actavis v Novartis, when approaching the question of obviousness, the judge, Warren J, considered the related aspects of purpose and motive "that is to say what is the problem or need that the skilled person is addressing, and whether there is a reason for the skilled person to take any steps at all ."

The judge acknowledged that the identification of the task which the skilled addressee faces can have a huge impact on, and can sometimes even answer, the question of obviousness.

The judge honed down the obviousness attack, concluding that:

"the only argument against the obviousness of claim 1 is that, in fact, nobody, whether clinician, formulator or commercial boss - would in fact have thought of actually producing a formulation within claim 1 as an end in itself; there would simply have been no motivation to do so. To put that another way: nobody would have asked the skilled formulator to produce such a formulation and he would not have thought of doing so himself without a request."

At that point you might have thought that the patent was going to be safe from an attack of obviousness. However, one should not jump to such conclusions lightly. Warren J went on to say:

"in my judgment, this absence of motivation does not prevent claim 1 from being technically obvious. The skilled team would, for reasons already given, not reject a sustained release formulation out of hand."

He went on to say:

"it does not need a commercial boss to ask the question "can you make a formulation within claim 1" for the skilled formulator to appreciate its technical obviousness any more than it needs a commercial boss to ask a similar question of the plate designer for that designer to appreciate the technical obviousness of the odd size plate. I conclude that claim 1 is obvious over the common general knowledge."

I do not know the protagonists in this case, but I suspect that the patentee came away somewhat unhappy.

At this point I would just like to make a short aside on the question of the length of current judgments. The passage I have just quoted from the judgment of Warren J was to be found at paragraph 323, and that was not quite the end of the judgment.

In Schlumberger Holdings Limited v Electromagnetic GeoservicesFloyd J delivered a judgment running to 330 paragraphs and three appendices. At the end of it we learnt nothing new on the question of obviousness.

Judgments never used to be this long. I am not sure that I do not blame Michael Fysh who delivered the Dyson v Hoover judgment in 2000 at great length, for starting this trend. The judges seem to feel the need to spend page after page demonstrating their complete grasp of the technical aspects, before moving on to the law. Perhaps it is the fear of appeal and what awaits them in the Court of Appeal, but they do seem to feel the need to set everything out in the greatest detail. Perhaps they work on the assumption that if the judgment gets above a certain length, there is no danger that Lord Justice Jacob will read it!

In Dyson v Samsung Arnold J duly obeyed the now established format and cited Pozzoli, together with Kitchin J in Lundbeck as approved by Lord Hoffmann in Conor v Angiotech!

The question of "prejudice" was under consideration. Dyson relied upon the passage of Lord Hoffmann in Conor v Angiotech where he said:

"there is in my opinion no reason as a matter of principle why, if a specification passes a threshold test of disclosing enough to make the invention plausible, the question of obviousness should be subject to a different test according to the amount of evidence which the patentee presents to justify a conclusion that his patent will work".

It was also agreed that it was not necessary that the patent must expressly address the prejudice, although a failure to mention any prejudice in the specification may be of evidential significance. Arnold J concluded:

"it is permissible for the experts to opine on the ultimate question i.e. whether an invention is obvious, but such conclusions in themselves are of little value. What matters are the experts' reasons for their decision."

In case we were in any doubt on the point, the cases of Ratiopharm v Alza(Kitchin J), Belvac v Carnaudmetalbox(John Baldwin QC), MMI v Cellxion(Floyd J) and Scinopharm v Eli Lilly (Kitchin J) all religiously adopt the devotion to Pozzoli and Conor v Angiotech.

The Ratiopharm v Alza case contains some interesting thinking on the question of whether the publication of a document necessarily means it forms a realistic starting point for an obviousness attack.

Kitchin J approved his own thinking from the case of Eli Lilly v HGS where he had said:

"in my judgment it is a wholly artificial approach and is not one which the law requires. I accept that the skilled person must be deemed to consider any piece of prior art properly and in that sense with interest...but the law does not deem the skilled person to assume the prior art has any relevance to the problem he is addressing or require him to take it forward. Having considered it, he may conclude that it is simply not a worthwhile starting point and so put it to one side."

This is a very difficult issue, and one which makes the prediction of the issue of obviousness in patent cases extremely hard. We are being told that a publication may exist which may go to issues in the patent, but which may be discarded by the skilled reader. On what basis? When would the skilled reader be more interested? Are there any criteria which help us make that decision? The answer is that there is little guidance, and accordingly an undesirable degree of uncertainty is at large.

In Aerotel v Wavecrest , the Court of Appeal came once again to consider the issue of commercial success. As usual, we were reminded that even when present, commercial success is, at best, a secondary measure or aid by which to assess obviousness. The old mantra was wheeled out again that:

"secondary evidence such as evidence of contemporaneous events had its place, and the importance of it varied from case to case. Nevertheless "it had to be kept firmly in its place". By itself commercial success is "of very little importance".

I must say that I continue to be disappointed by this approach. The overall question is whether or not the invention described in the patent is obvious. This is a question of fact. Any number of factors will be in play. Why are commercial issues secondary? We live in a commercial world where people make decisions whether to develop products or not and indeed whether to invest in research and development, often with purely commercial motives. Accordingly, it seems to me that commercial considerations should be highly relevant in assessing an issue as subjective as obviousness. The courts try manfully to make obviousness an objective question, but it is not. How can it be when the circumstances in which it is considered vary so much from case to case, and the state of mind of the fictional "skilled person" is so much in issue? It never really has been, and it never can be. The judges give themselves away by reference to questions of merit, contribution to the sum of human knowledge, and "deserving". If those issues are at play, I fail to see why commercial success should not be a relevant consideration. It is not easy to prove, as there may be many other issues which dictate the success or otherwise of a product made pursuant to a patented invention. However, once that evidence is properly garnered, and the success can be attributed to the patent, then it seems to me that commercial success should take its place at the top step of relevant evidence, rather than at present round the back at tradesman's entrance.

The case of Generics v Daiichi in the Court of Appeal contains probably the most significant consideration of the question of obviousness this year.

Daiichi owned a patent concerning levofloxacin, an enantiomer of the racemic mixture, ofloxacin. Generics UK claimed that the patent was obvious over ofloxacin. Pozzoli and Kitchin/Hoffmann "were duly acknowledged by the Court of Appeal which went on to consider the question of motivation". The often quoted passage from the Palmaz case was referred to where the Court of Appeal said:

"secondly, if a particular route is an obvious one to take or try, it is not rendered any less obvious from a technical point of view merely because there are a number, and perhaps a large number of other obvious routes as well."

In this case, the Court of Appeal agreed that that is uncontroversial, but does not mean that a skilled man will pursue every avenue relentlessly when he has only the mildest of motives for doing so.

Once again the question of "obviousness to try" raised its head, and it was restated that "it is only obvious to try when there is at least a fair expectation of success. Moreover it has to be a route which would at least occur to the skilled person".

The definition of common general knowledge came to be considered in this case. The usual passage from Beloit v Valmet was considered where the judge said:

"the notional skilled addressee is the ordinary man who may not have the advantages that some employees of large companies may have. The information in the patent specification is addressed at such a man that must contain sufficient details for him to understand and apply the invention. It will only lack an inventive step if it is obvious to such a man."

Accordingly, the usual warning is given that just because something is published, does not mean that it is common general knowledge. Lord Justice Jacob expressed a strong opinion in this case when he said:

"it would be wholly subversive of patents and quite unfair to inventors if one could simply say "piece of information A is in the standard literature, so is B (albeit in a different place or context), so an invention consisting of putting A and B together cannot be inventive". The skilled man reads each specific piece of prior art with his common general knowledge. If that makes the invention obvious, then it does. But he does not read a specific citation with another specific citation in mind, unless the first causes him to do so or both are part of the matter taken to be in his head."

In this case, the Court of Appeal concluded that the judge had been right in deciding that the skilled person might have considered it worthwhile exploring whether ofloxacin could be resolved, but only to a point. He did not consider that the proposed route was attractive enough. Lord Justice Jacob said:

"that seems to me to be a perfect example of a judge properly carrying out the balancing task of forming an overall value judgment which it is so often the task of a first instance judge to perform."

Of course, he could not leave it at that and went on to say:

"I am not sorry to reach this conclusion. Daiichi's work led to a better medicine than ofloxacin. Levofloxacin is not just twice as active as ofloxacin (which might have been expected) but it's a lot more soluble and less toxic than was predictable. It can be used in higher dosages than might have been expected with corresponding medical benefits. Only a curmudgeon would say there was no invention here."

I merely quote that and remember once again the need for the consideration of obviousness to be entirely objective!

Insufficiency

This is the only area where the House of Lords has been active this year. Last year you may recall, when the case of Generics v Lundbeck reached the Court of Appeal, Lord Hoffmann descended from the House of Lords to sit in the Court of Appeal in order to clarify his own previous House of Lords decision in Biogen v Medeva. What nobody much anticipated was that his own Court of Appeal judgment would subsequently be appealed to the House of Lords, as it was still known then.

The question for the House of Lords was whether the claim to the product was supported by the description. At first instance Kitchin J had said "no". In a passage found compelling he said "the first person to find a way of achieving an obviously desirable goal is not permitted to monopolise every other way of doing so ."

He had based himself largely on his interpretation of the opinion of Lord Hoffmann in Biogen v Medeva. However when the case went to the Court of Appeal and Lord Hoffmann himself gave the leading judgment, he distinguished the Biogen case from the Generics v Lundbeck case saying that this was a claim to a single product, whereas Biogen was for "a molecule identified partly by the way in which it has been made and partly by what it does ."

Lord Mance summarised the issue quite clearly saying:

"the issue on this appeal is short though fundamental. Where a patent claim relates to a product, rather than a method, is the patent liable to revocation on the ground of insufficiency if the only inventive step involved in the product consists of the method by which it is made available and if its description and specification disclose only that invented method, when superior methods are found by others which owe nothing to that method?"

Lord Mance went on to summarise the difference between the previous findings saying:

"the essential difference in the courts below was that Kitchin J confined the legitimate scope of the patent claim by reference to the inventive step, while the Court of Appeal held that a patent claim to a single novel product embraces all methods of producing that product, even if the description and specification cover only one such method and others emerge owing nothing to it. The question now is which answer should be adopted".

Lord Mance acknowledged that there were questions of principle and indeed philosophy at play here saying:

"considerations such as quality, incentivisation into research and development and administrative and legal simplicity can all be deployed".

Basically, he said that the approach adopted by Kitchin J tied the scope of the patent for an invented product to the inventive step or technical contribution involved in the invention. The alternative approach is to say that, once a novel product has been created by some inventive step or technical contribution, a patent may be sustained in respect of the product however it might in future prove possible to make it.

This was clearly a very difficult case. Lord Hoffmann himself in the Court of Appeal had expressed some sympathy with Kitchin J's reaction to the inherent breadth of the product claim. Lord Mance said:

"this is not a case where someone found or made a substance which no-one had previously thought of or thought would have any value".

Lord Mance concluded that Lord Hoffmann's approach was the right one, and that a patent for a product gave protection for that product, however it was made, even if methods arose which were not disclosed within the body of the patent itself. One method was enough.

Lord Neuberger agreed. After a similar analysis, he concluded:

"in the light of this discussion it appears clear to me that the product claim in the present case is valid. I appreciate that this means that, by finding one method of making a product, the person can obtain a monopoly for that product. However, that applies to any product claim".

He went on to say:

"the role of fortuity in patent law cannot be doubted; it is inevitable as in almost any area of life. Luck as well as skill often determines, for instance, who is first to file, whether a better product or process is soon discovered, or whether an invention turns out to be valuable. Further, whilst the law must be principled, it must also be clear and consistent".

Lord Neuberger concedes that the mistake made by Kitchin J was one which he had made himself in a previous case, but concluded that, nonetheless, it was a mistake.

Lord Walker identified an issue which arose during the arguments, namely the question of whether "inventive concept" means the same as "technical contribution to the art". Acknowledging that neither expression is a statutory term or art, he went on to say that although it had been put in this case that the terms were synonymous, he did not think this is quite right. The problem which can arise is that, when considering a process patent, the question of identifying an inventive step, or inventive concept is quite straightforward. However, in dealing with a product patent, that is not so straightforward, whereas it is possible to identify more easily the technical contribution to the art. This is not a point of great significance, but was raised as a possible explanation of the confusion which appeared to have arisen prior to Lord Hoffmann's clarification in this case in the Court of Appeal.

In short, the House of Lords approved Lord Hoffmann, disapproved Kitchin J, and rejected the appeal.

Added Matter

I have already mentioned that in Dyson v Samsung there were very heavy amendments proposed which meant that the two patents in-suit were effectively rendered unrecognisable in the form in which it was proposed that they should be amended. In circumstances such as that, it is almost inevitable that the question of added matter will be raised.

The standard test of assessing added matter from the case of Bonzel v Intervention Limited was repeated and adopted. The test says:

"the decision as to whether there was an extension or disclosure must be made on a comparison of the two documents read through the eyes of a skilled addressee. The task of the Court is threefold:

1. to ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application;
2. to do the same in respect of the patent as proposed to be amended;
3. to compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition.

The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application, either explicitly or implicitly."

It is clear that matter can be added by deletion or addition, but it can get more subtle than that. In Palmaz's European Patents Pumfrey J described a particular form of added matter saying:

"if the specification discloses distinct sub-classes of the overall inventive concept, then it should be possible to amend it down to one or other of those sub-classes, whether or not they are present as inventively distinct in the specification before amendment. The difficulty comes when it is sought to take features which are only disclosed in a particular context and which are not disclosed as having any inventive significance and introduce them into the claim deprived of that context. This is a process sometimes called "intermediate generalisation".

The job facing Arnold J in Dyson v Samsung was to establish whether or not some or all of the many amendments sought constituted intermediate generalisation. Anyone sufficiently interested in the inner workings of cyclonic vacuum cleaners can read the reasoning for themselves, but suffice to say that the judge did find significant examples of intermediate generalisation, and many of the amendments sought were rejected on that basis. In particular, it is interesting to note that items which appeared only in the figures with no textual support at all, seemed particularly vulnerable.

In Napp v Ratiopharm the question arose of "an undisclosed disclaimer". The concept is explained by the Court of Appeal saying:

"during the course of prosecution a piece of prior art may emerge which destroys the novelty of part of what was sought to be claimed. A basic question arises: can the patentee amend what he claims so as to cut out the anticipatory material? To cut it out he needs to identify it so that it can be disclaimed. His original application will have made no reference to it. So by referring to it and disclaiming something he has never referred to before (hence the phrase "undisclosed disclaimer") the patentee is adding "subject matter which extends beyond the content of the application as filed ."

An example is given of a process to be carried out at a temperature range of 0°C to 100°C. The proposed patentee discovers later that it only worked between 75oC and 80oC. If he is allowed to amend the description and claim to that narrow range (never mentioned before) he would in practice be adding knowledge acquired after filing to render his patent sufficient.

On the other hand such amendment would not be adding anything new where the disclaimed range was simply that disclosed in a co-pending application.
In short, the Court of Appeal approved the first instance finding of Floyd J where he said:

"nevertheless, the test for added subject matter remains that set out in the European Patent Convention and the Patents Act. The reason that disclaimers of accidental and deemed anticipations do not offend is that they do not add subject matter relevant to the invention. If a disclaimer introduced by a divisional application does not add subject matter relevant to the invention, but merely excludes subject matter from protection, then it too will not offend against the provisions".

This seems a sensible and fairly uncontroversial approach.

Technical Matters

Patentable Subject Matter

Mr Justice Lewison has been particularly active in this field over the last few years, and this year he gave substantial decision in the case of AT&T and CVON Applications. The two applications, heard together, both constituted appeals from the UK Patent Office which had declined to grant patents in relation to software related inventions. AT&T's application related to a "content broker hosting service system". CVON's application was a message modifying system used to modify text messages dependant on the membership of the sender or recipient of a "group".

The judge first approved the four-part approach previously set out in the Aerotel case. As a reminder, the test to decide whether a claimed invention is patentable is as follows:

1. properly construe the claim;
2. identify the actual contribution;
3. ask whether the identified contribution falls solely within the excluded subject matter;
4. check whether the actual or alleged contribution is actually technical in nature.

Lewison J went on to consider the respective steps in some details, emphasising that the third was crucial, namely "is the contribution solely of excluded matter?"

The test of "technical contribution" has been a difficult and vexed issue for the courts over a number of years, not just in the United Kingdom. Lewison J manfully tries to establish a set of principles which might be applied when considering the question of "technical contribution":

1. "that the four-stage test in Aerotel remains the law, but it should not be followed blindly;
2. that the question whether the contribution is "technical" must be asked and answered in the course of the enquiry, but that it does not matter that it is asked at stage three or stage four."

He quotes at length from Lord Neuberger in Symbian, describing one passage as "somewhat depressing" when Lord Neuberger says:

"we believe that it would also be dangerous to suggest that there is a clear rule available to determine whether or not a programme is excluded... each case must be determined by reference to its particular facts and features, bearing in mind the guidance given in the decisions mentioned in the previous paragraph ."

I can see precisely why he believes that to be somewhat depressing. It basically means that each case is unpredictable, and has to be decided entirely on its own specific facts. In some respects it was ever thus, particularly with some aspects of patent law like obviousness, but bearing in mind the sheer volume of cases concerning patentable subject matter in previously years, it is a slightly worrying thought.

As one German judge pointed out, any interaction between software and hardware is in a sense "technical" and the buyer of a computer programme often receives what the software house describes as "technical support" for dealing with malfunctions in the software.

Lewison J concludes that such use of the word "technical" cannot be what is meant in this context.

After a significant review of the cases, Lewison J concludes that it is impossible to define the meaning of "technical effect" precisely in this context, but that there are useful signposts to a relevant technical effect and they are:

1. "whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
2. whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;
3. whether the claimed technical effect results in the computer being made to operate in a new way;
4. whether there is an increase in speed or reliability of the computer;
5. whether the perceived problem is overcome by the claimed invention as opposed to being merely being circumvented."

To use the judge's own phrase, rather depressingly, he goes on to say:

"if there is a technical effect in this sense, it is still necessary to consider whether the claimed technical effect lies solely in excluded matter".

In short, both appeals failed.

We expect cases concerning patentable subject matter to be about computers, but that is not always the case.

By a landmark decision in November 2008 the Enlarged Board of Appeal of the European Patent Office refused a patent application by the Wisconsin Alumni Research Foundation covering the use of human embryonic stem cells. Stem cells are a special type of precursor cell, capable of renewing themselves and differentiating into a diverse range of cell types to skin to nerve cells. While stem cells are found in adults, the early embryo consists of a sphere of particularly important stem cells which are capable of forming any cells of the body. The potential advantages of therapeutic treatment are clear.

Article 53(a) of the EPC states that European Patent should not be granted in respect of inventions, the publication or exploitation of which would be contrary to public morality. Exploitations should not be deemed to be contrary however merely because it is prohibited by law or regulation in some or all of the contracting states.

In this case the patent application was held to be contrary to morality for the purposes of Article 53. Rule 28 of the EPC implementing regulations specifically concerned the uses of human embryos for industrial or commercial purposes. In this case, the use of embryonic stem cells was not specifically disclosed in the claims of the patent application, but it was clear that the invention necessarily required the use of human embryos as starting material and, in the eyes of the EPO, that is contrary to morality.

Somehow I feel that this sort of issue has no place in patent law at all.

Other issues

In Schlumberger v Electromagnetic Geoservices an issue arose on the disclosure and inspection of documents. The claimant was the holding company of a group that occupied the position of the world's largest oil field services corporation, operating in approximately 80 countries. The defendant filed for three patents relating to controlled sonar electromagnetic surveying equipment that could be used when detecting subterranean reservoirs. When the defendant's patents came to the claimant's attention, it sought to have them declared invalid on the ground they lacked an inventive step. The defendant sought disclosure of documents from the claimant and the other companies within its group, on which it based its contention that the patents were obvious. The claimant disclosed a single document relating to documents it held. The claimant contended that it had no obligation to supply documents of relevance held by companies within the group as the duty to disclose was limited to documents that were or had been in its own control.

Floyd J heard the case and allowed the application. He said that on the evidence the relevant documents had been within the control of the claimants. It could be considered that the claimant had the general consent of the companies within its group. Further, such documents would be of relevance to the parties in the case.

It is quite an interesting notion that to say that all group companies are effectively cooperating, or at worst are deemed to have given "general consent" while action is brought by one. Clearly much would depend on the management structure of the group in question.

In Grimme v Scott Kitchin J was asked to grant an order for a speedy trial on the grounds that it was commercially important for the case to be heard before a particular trade fair at which the claimant and defendant were both likely to be exhibiting.

Kitchin J granted the order saying that there was a real prospect of the action being heard and judgment delivered before the trade fair providing commercial certainty to the parties.

In the case of Re Bending Light Limited Kitchin J adopted a fairly hard-line in relation to the payment of patent renewal fees. A fee of £210 was not paid, and the non-payment persisted beyond the usual grace period. The patentee (perhaps I should say former patentee) contended that it had suffered financial hardship, but there appeared to be evidence that it was perfectly capable of meeting the fee of £210 during the period in question. Unsurprisingly, the application to restore the patent was refused. Given the sums involved, it should be pointed out that if a limited company was incapable of making a payment of £210, it could perhaps consider itself insolvent!

If there has been one thing rarer than hen's teeth down the years it is successful cases relating to employee compensation for inventions of outstanding merit. However, one has come along at last in the shape of the decision in the case of Kelly v GE Healthcare Limited.

Section 40 of the Patents Act says:

"where it appears to the court or the comptroller on an application made by an employee within the prescribed period that an employee has made an invention belonging to the employer for which a patent has been granted, that the patent is (having regard among other things to the size and nature of the employers undertaking) of outstanding benefit to the employer and that by reason of those facts it is just that the employee should be awarded compensation to be paid by the employer, the court or the comptroller may award him such compensation of an amount determined under Section 41 below."

It helps us to anticipate the trouble ahead when considering the quote from Lord Nelson of Stafford in Hansard as the Patents Act 2005 which amended this section passed through Parliament. He said:

"I have never seen such a collection of vague terms in my life. What compensation, who is responsible, what is outstanding benefit, what value is to be put on this, and what on that?"

and further

"who is to be the Solomon who will sort out all these vaguenesses at the end of the day and adjudicate on compensation when a claim is made, I hesitate to think."

Floyd J may not have previously have likened himself to King Solomon, but it fell to him to make the first substantive adjudication on the subject. The philosophical basis for the section is that the law makes it clear that a patent belongs to the inventor's employer, if he has a normal full contract of employment. Accordingly, it is possible that the employee may receive only his basic salary remuneration, whilst providing to his employer an invention of such benefit that yields very substantial financial reward.

Helpfully, the Patents Act provides no definition of "outstanding benefit". Aldous J (as he was then) in Memco Med Limited's patent said:

"the word outstanding denotes something special and requires the benefit to be more than substantial or good. I believe that it is unwise to try and redefine the word "outstanding". Courts will recognise an outstanding benefit when it occurs".

This smacks of defining an elephant. It is almost impossible to define, but easy to recognise when you see one. It is, in judicial terms, the classic "cop out".

It is quite clear that the benefit must accrue from the patent, rather than merely the invention, and to that end a "but-for" test has evolved. It goes something like this:

"it is likely to be useful to assume that that patent was never granted due to some failure of the patent agents and thereafter to decide what would have been the position of the employer. It will then be possible to ascertain the benefit from the patent by comparing the position of the employer with the position he would have been in if the patent had not been granted".

The question of the word "compensation" also causes considerable problems. Lawyers are accustomed to thinking of compensation in terms of some kind of recompense for loss. However, the word is much broader than that. Compensation can be used as a word synonymous with salary, and certainly with remuneration. Floyd J said:

"I think "compensation" has a wider meaning... what is being compensated for by both limbs of Section 40 is the disparity between the benefits received by the employee and the benefits received by the employer. In the Section 40(2) case this is particularly clear - one benefit is "inadequate in relation to" the other. This inadequacy has arisen after the event, and in the light of the disparity between the benefit to the employer and the benefit to the employee. There may have been nothing unfair about the contractor signing the patent at the time it was made; but with the benefit of hindsight it has become so."

I do not propose to go into the method of calculation of compensation in this case. Suffice to say that the claimants were both rewarded substantially for their efforts, and a useful precedent has finally been set in this area.

A year in the Patents Court would not be complete without at least one serious rant from Lord Justice Jacob. He duly obliged this year in the case of Eli Lilly v Human Genome Sciences.

The hearing started out as a simple issue concerning the date of an appeal. Lord Justice Jacob took the opportunity to expound his view that parties should cooperate amongst themselves, and invoke the cooporation of the Opposition Division and/or the Boards of Appeal of the European Patent office to promote efficient and rational allocation of work between the EPO and national courts. Not unusually, there were parallel proceedings here in the High Court, and the European Patent Office. The opposition division held its oral proceedings in June 2008 and revoked the patent in suit. On 31 July, Kitchin J handed down judgment also revoking the patent.

Permission to appeal was granted in England and the case entered into the normal procedure. The appeal date was fixed to be heard in late July 2009. Neither side told the court what was going on at the EPO and neither side asked the EPO to speed up the proceedings. The opposition division took nearly six months to give its written decision which it finally did in December 2008. Lord Justice Jacob said that he had little doubt it would have done so earlier if it had been told the matters were of commercial importance and reasons were needed earlier so as to bring forward the date for an appeal. Lord Justice Jacob said:

"I have the general impression that those who were conducting the opposition were doing it in their own time".

As an aside, it is hard to guess who else's time they might have been doing it in.

Apparently, when he found out about the parallel proceedings Lord Justice Jacob called the Counsel for the parties together in January 2009 on an informal basis to see if it was possible for the appeal to be heard by the Board of Appeal at an earlier date. He said that:

"the EPO extended the hand of cooperation gladly and warmly ."

It offered a date in June if the parties were willing to cooperate in speeding things up. However, the patentee said that it was unable to cooperate to make that practical. At this point steam appears to have started coming from Lord Justice Jacob's ears. I will not name any names to spare the potentially innocent, but a patent attorney was singled out for blame. Lord Justice Jacob indicated that he knew the result in June 2008 and had had nearly 9 months to get his documents and material in, so it was inexplicable that he should say that he was unable to do so before April 2009 at the earliest. This delay would have effectively scuppered the early hearing offered by the EPO. Lord Justice Jacob then intervened himself and contacted the EPO. Given the date when it was said that the documents would be available, the EPO said that the earliest they could conduct a hearing was September. On that basis, Lord Justice Jacob decided that he had no option but to move the case from July to December 2009. He concluded saying:

"in future parties who are litigating before the EPO and the courts here should inform both the EPO and our court of the position as early as possible - and should where possible ask the appropriate tribunal (either the EPO or the English Court) to speed things up so as to avoid duplication of proceedings ."

This sort of "naming and shaming" is grossly unfair and out of order. I understand that there are very sound reasons why the patent attorney in question could not respond, including the six month delay in written reasons emanating from the EPO. An outburst of that type is unbecoming of a senior judge.

It seems to have been some years since the issue of "straw men" raised its head in the courts. In TNS v Nielsen, Arnold J had to deal with such a point.

The claimant sought revocation of the defendant's European patent relating to Television Audio Management Measurement Systems. An opposition was also entered against the same European patent at the EPO.

The action was an action to strike out on the basis that the claim is an abuse of the process of the court. The contention that the claim is an abuse is put in two distinct if related ways. The first is that that claim constitutes, "pointless and wasteful litigation".

Much of the authority in this area seems to have derived from the law of defamation, where people have brought actions for alleged libel which have been published only to one person.

Accepting that the court has power to strike out a properly constituted claim on the grounds that it is an abusive process where it is plain that the litigation is pointless and wasteful, Arnold J said that a case such as the present cannot be struck out on that basis. He referred to a number of cases, and in particular the Cairnstores Ltd case in which the claimant was an "off the shelf company which did not trade, had no assets, and had no objects relating to the pharmaceutical industry".

That company applied to revoke two patents relating to formulations of a drug owned by the defendant. The claimant declined to state the nature of any interest it might have in bringing the proceedings. It was therefore legitimate to infer that the claimant was bringing the proceedings on behalf of some undisclosed third party. However, an application to strike out was refused on the basis that the expression "any person" in section 72 of the Patents Act meant just that - any person, regardless of whether they had any real interest or not.

In the current case, it was not disputed that the claimant had a properly constituted and arguable claim for revocation of the patent in suit, nor was it suggested by the defendant that there was anything in the conduct for the claim for revocation that amounted to an abuse of process.

Arnold J concluded:

"given that any person can apply to revoke a patent and that the applicant's motive is irrelevant, in my judgment it follows that it is not an abuse of process to apply to revoke a patent even if, as counsel for the defendant argues, the claimant has no sufficient commercial interest in bringing the present claim ."

It was also argued that the case had been brought for an improper or collateral purpose. This derived from a witness statement of a solicitor acting for the claimant in which he meant he used the expression "such a decision may be "exported" to other national courts ."

The conclusion was reached that the true purpose in commencing the proceedings in England was to obtain a judgment for use in other contracting states and that that was an abuse of the process.
Suffice to say Arnold J dismissed that application rather swiftly.

Arnold J, having decided that the claim should not be struck out on either of the basis of the claim, also refused a stay pending the outcome of the EPO opposition. I may not be alone in suspecting that had the application been for a stay alone, without the collateral baggage of the strike out application, they may have got a more sympathetic hearing.

Summary

This has been a year best personified in nautical terms by the expression "steady as she goes" with only the slightest touch on the tiller along the way. To my mind, the only really controversial decision is that of the Court of Appeal, under the guidance of Lord Justice Jacob, in Virgin v Premium. I very much hope, and not just for personal reasons, that the Supreme Court gets an opportunity to review a particular extension of the tenets of patent construction in this country.

Over the years I have feared the United Kingdom was becoming an anti-patent jurisdiction. However, after Conor v Angiotech I concluded that maybe the tide had turned. What do the statistics tell us?

In a broad brush analysis where patents from the same family were counted as one for the purpose of the review, we have found that approximately 12% of patentees were successful in having patents held both valid and infringed in High Court cases for the year 2007. This percentage increased to approximately 18% in 2008. However, the percentage of patents held valid, whether in infringement proceedings or revocation, was approximately 30% in 2007 and this increased to 47% in 2008.

The trend in 2009 up to the commencement of the long vacation, shows that the patentees' prospects are improving even further. Approximately 33% of cases decided up to that point had seen patents held valid and infringed. The percentage of patents held valid was approximately 41%.

Of course, the numbers of cases are too low to draw strong statistically reliable conclusions, but they do provide an interesting indication of the English courts' move towards a more favourable view of patents, and to quote Lord Justice Jacob in Virgin v Premium, "a good thing too".

We are awaiting the progress of the proposed reforms to the Patents Country Court, which look likely to give rise to a very different, and interesting jurisdiction, and one which I broadly support. The EPLA grinds on, and we await the EPO's answer to certain questions posed in relation to software patents. There is no sign that the years ahead will be dull in the world of patents.

On which point, let me turn to the annual "Judge of the Year" award.

I think you can guess from the tone of what has gone before who is not going to win it this year! I am afraid that this has not been a good year for Lord Justice Jacob and he is in no danger of becoming the first judge to receive a "third" award.

Mr Justice Kitchin continues on in his serene way, whilst Mr Justice Arnold has made a very promising start. I do wish the judges could learn to keep their judgments a little shorter, and perhaps to use appendices more in relation to technical aspects. However, it is perhaps in the context of reading many long and slightly dull judgments, that I cannot help but give the award to the one judge who had made me laugh three times in his judgments this year, and consequently, for that in particular, but also for a consistently high standard of judgments, particularly in the field of patentable subject matter, the 2009 Judge of the Year award goes to Lewison J.

I must express a slight concern that, with Lord Hoffmann having retired, and Lord Justice Neuberger having returned to the Court of Appeal in his new job as Master of the Rolls, there is no experienced IP judge in the Supreme Court. It may be that Lord Neuberger will return to the House of Lords periodically to deal with IP cases, but it is certainly of concern that, when there are still a number of serious controversies which could do with a ruling from the highest court in the land, there is nobody with substantial experience, properly equipped to do the job.

This is probably the least dramatic of the last five years in the patents courts, but perhaps that is not a bad thing in itself. I said last year that 2008 had been "probably the best year in the Patents Court in the twelve years that I have been writing this paper". That is not a claim which 2009 can make, but it has not been a bad year and perhaps we are seeing evidence that there will be a short period of calm in the light of so many substantial and significant judgments in recent years.