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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Nichia Corp v Argos Ltd [2007] EWCA Civ 741 (19 July 2007) URL: http://www.bailii.org/ew/cases/EWCA/Civ/2007/741.html Cite as: [2007] EWCA Civ 741, [2007] BusLR 1753, [2007] Bus LR 1753 |
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COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
THE HON MR JUSTICE PUMFREY
HC 06 C03955
Strand, London, WC2A 2LL |
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B e f o r e :
THE RT HON LORD JUSTICE RIX
and
THE RT HON LORD JUSTICE JACOB
____________________
Nichia Corporation |
Claimant/ Respondent |
|
- and - |
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Argos Limited |
Defendant/Appellant |
____________________
for the Claimant/Respondent
Daniel Alexander QC and James St Ville (instructed by Messrs DLA Piper UK LLP)
for the Defendant/Appellant
Hearing date : 24 May 2007
____________________
Crown Copyright ©
Lord Justice Jacob:
A man had better have his patent infringed, or have anything happen to him in this world, short of losing all his family by influenza, than have a dispute about a patent. His patent is swallowed up, and he is ruined. Whose fault is it? It is really not the fault of the law: it is the fault of the mode of conducting the law in a patent case. That is what causes all this mischief, Ungar v Sugg (1899) 9 RPC at 117.
The Relevant Rules
Disclosure limited to standard disclosure
31.5 (1) An order to give disclosure is an order to give standard disclosure unless the court directs otherwise.
(2) The court may dispense with or limit standard disclosure.
…
Standard disclosure – what documents are to be disclosed
31.6 Standard disclosure requires a party to disclose only –
(a) The documents on which he relies; and
(b) The documents which –
(i) adversely affect his own case;
(ii) adversely effect another party's case; or
(iii) support another party's case; and
(c) the documents which he is required to disclose by a relevant practice direction.
PD 5.1
Standard disclosure does not require the disclosure of documents where the documents relate to -
…
(2) any ground on which the validity of a patent is put in issue, except documents which came into existence within the period –
a. beginning two years before the earliest claimed priority date; and
b. ending two years after that date; and
(3) the issue of commercial success."
Disclosure of inventor's records in cases of alleged obviousness
[7] It is settled that this man, if real, would be very boring – a nerd. Lord Reid put it this way in Technograph v Mills & Rockley [1972] RPC 346 at p.355
"… the hypothetical addressee is a skilled technician who is well acquainted with workshop technique and who has carefully read the relevant literature. He is supposed to have an unlimited capacity to assimilate the contents of, it may be, scores of specifications but to be incapable of a scintilla of invention. When dealing with obviousness, unlike novelty, it is permissible to make a "mosaic" out of the relevant documents, but it must be a mosaic which can be put together by an unimaginative man with no inventive capacity."
[8] The no-mosaic rule makes him also very forgetful. He reads all the prior art, but unless it forms part of his background technical knowledge, having read (or learnt about) one piece of prior art, he forgets it before reading the next unless it can form an uninventive mosaic or there is a sufficient cross-reference that it is justified to read the documents as one.
[9] He does, on the other hand, have a very good background technical knowledge – the so-called common general knowledge. Our courts have long set a standard for this which is set out in the oft-quoted passage from General Tire v Firestone Tire & Rubber [1972] RPC 457 at 482 which in turn approves what was said by Luxmoore J in British Acoustic Films 53 RPC 221 at 250. For brevity I do not quote this in full – Luxmoore J's happy phrase "common stock of knowledge" conveys the flavour of what this notional man knows. Other countries within the European Patent Convention apply, so far as I understand matters, essentially the same standard.
[10] The man can, in appropriate cases, be a team – an assembly of nerds of different basic skills, all unimaginative. But the skilled man is not a complete android, for it is also settled that he will share the common prejudices or conservatism which prevail in the art concerned.
The question of obviousness has to be assessed through the eyes of the skilled but non-inventive man in the art. This is not a real person. He is a legal creation. He is supposed to offer an objective test of whether a particular development can be protected by a patent. He is deemed to have looked at and read publicly available documents and to know of public uses in the prior art. He understands all languages and dialects. He never misses the obvious nor stumbles on the inventive. He has no private idiosyncratic preferences or dislikes. He never thinks laterally. He differs from all real people in one or more of these characteristics.
(1) (a) Identify the notional "person skilled in the art"
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
In Graham v John Deere Co of Kansas City, 383 U.S.1 (1966), the Court set out a framework for applying the statutory language of §103, language itself based on the logic of the earlier decision in Hotchkiss v Greenwood, 11 How. 248 (1851), and its progeny. See 383 U.S., at 15-17. The analysis is objective:
"Under §103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." Id., at 17-18.
[64] This does not mean that evidence from those in the art at the relevant time is irrelevant. It is not. As I have said, it may help the court to assess the possible lines of analysis and deductions that the notional addressee might follow. Furthermore, sometimes it may be very persuasive. If it can be shown that a number of ordinary workers in the relevant field at the relevant time who were looking for the same goal and had the same prior art, missed what has been patented then that may be telling evidence of non-obviousness. This is particularly the case where the commercial benefits of the development would have been apparent and a long time had passed between the publication of the prior art and the priority date of the patent. Hence, the impact and interrelationship between the familiar concepts of long felt want and commercial success. Likewise evidence that ordinary men in the art and working from the same prior art at the relevant time independently came to the same development may be some evidence that the notional skilled man would have done likewise.
Evidence
322 In coming to a conclusion as to whether or not a claim contains a real inventive step over what was previously known or used, the court usually attaches considerable weight to the evidence of the inventor himself. Evidence which shows that the invention was not obvious to the defendants at the priority date will be of considerable weight if the defendants were persons skilled in the art. e.g. (i) where the defendants at first contended that they had made the invention and offered to help the plaintiff to get a patent if they were granted a free licence, or (ii) where the defendants introduced into a subsidiary claim of a patent specification of theirs the feature alleged to be obvious. The evidence of a director of the defendant company that the invention was new to him has been held to be relevant on the issue of obviousness [all citations omitted].
It is certain that the general mechanical idea of combining in this class of work all the necessary operations in one machine was novel and a perusal of the evidence of the inventor Sundback given before the Trial Judge satisfies their Lordships that, so far from the combination being obvious, it was only after years of work at the problem of how to produce stringers that the combination was recognised to be desirable or found to be possible, and that the inventive element necessary to constitute subject-matter is made sufficiently evident.
301 In considering whether or not an invention is obvious, the way in which the inventor arrived at it is of no importance.
The authority given for this is very old indeed, being Crane v Price (1842) 1 W.P.C. 393 at p.411.
In applying the statutory criterion and making these findings the court will almost invariably require the assistance of expert evidence. The primary evidence will be that of properly qualified expert witnesses who will say whether or not in their opinions the relevant step would have been obvious to a skilled man having regard to the state of the art. All other evidence is secondary to that primary evidence. In the past, evidential criteria may have been useful to help to elucidate the approach of the common law to the question of inventiveness. Now that there is a statutory definition, evidential criteria do not form part of the formulation of the question to be decided.
In the nature of things, the expert witnesses and the court are considering the question of obviousness in the light of hindsight. It is this which may make the court's task difficult. What with hindsight, seems plain and obvious, often was not so seen at the time. It is for this reason that contemporary events can be of evidential assistance when testing the experts' primary evidence. For instance, many people may have been industriously searching for a solution to the problem for some years without hitting upon the allegedly obvious invention. When this type of evidence is adduced, the court can quickly find itself caught up in an investigation of what was or was not obvious to certain identified individuals at certain dates during the history of the development of the product or process involved. This gives rise to complications because the state of knowledge of these individuals, though skilled, may not correspond to the statutory definition of the state of the art. A particular inventor may have been unaware of some aspect of the state of the art as defined in section 2(2), and may therefore have genuinely taken what was actually an inventive step, but nevertheless be unable to claim a patentable invention since the step was, in the terms of the statute, obvious. Further, this type of evidence invites the court to speculate whether particular individuals were of an inventive disposition, because the earlier making of the same invention by another or others does not necessarily mean that at a later date the invention was obvious. Yet again, evidence of the commercial success of the invention can lead into an investigation of the reasons for this success; there may be commercial reasons for this success unrelated to whether the invention was or was not obvious in the past.
Secondary evidence of this type has its place and the importance, or weight, to be attached to it will vary from case to case. However, such evidence must be kept firmly in its place. It must not be permitted, by reason of its volume and complexity, to obscure the fact that it is no more than an aid in assessing the primary evidence.
Knowledge of the inventor's experiments will assist the defendant in two respects. He can obtain his own expert's opinion upon whether the steps taken by the inventor were the steps which the ordinary skilled man would or could take and whether such steps were no more than steps which would or should have been obvious to any skilled man: and he can, as was suggested in the Australian case, utilise any knowledge which he acquires regarding the inventor's experiments or researches in cross-examination of the plaintiff's technical witnesses by reference to what an admittedly skilled man did.
The other piece of historical evidence relied on by the defendants consisted of the steps taken by Dr Hilton, the inventor, to reach the invention. Dr Hilton was called by the plaintiff and was cross-examined. From time to time the courts have said that the way in which the inventor reached his invention is immaterial. He may think that he has made a marvellous invention or he may have worked out his development by a process which, to him, was entirely logical. But to use what he did and thought he had achieved as evidence for or against obviousness is to put the cart before the horse. Once the court has decided whether the step was obvious it can then assess whether what the inventor did was what the notional man in the art would have done from the pleaded art or not. Evidence from the inventor that he took a long time to make the invention and thought he was very clever is no evidence that he was. Similarly, analysis after the event of the logical steps he took to arrive at the invention is no evidence that it is obvious. If he is an inventive man he will no doubt see things more clearly than his notional non-inventive colleague. It would be strange if the fact that the inventor got to the invention was used as evidence that others would also. These propositions seem to me to be supported by cases such as Re I. G. Farbenindustrie A.G.'s Patent (1930) 47 R.P.C. 289 and Allmanna Svenska Elektriska A/B v. The Burntisland Shipbuilding Co. Ltd (1952) 69 R.P.C. 63. In addition to this, for the same reasons as are set out above, the evidence of what the inventor did or thought is even more irrelevant if he never had before him the prior art on which the defendant is relying. In this case, it is quite clear that Dr Hilton did not have the Hingorani document at the time he made his development. It appears that he did have the results of a literature search which included a number of documents, including the Hingorani abstract, none of which is relied on by the defendants for the purpose of their obviousness attack.
In the light of these considerations, I have come to the conclusion that all the historical evidence of what individuals did or are thought to have done at or about the priority date is of no assistance in determining whether or not Dr Hilton's development was obvious. Furthermore, although there was extensive discovery, including discovery of Dr Hilton's research work, very little of it was referred to in court and even the small number of documents which were took the case no further. This is a great pity because it has meant that the parties have spent much more on this litigation than was necessary and the trial lasted longer than it ought. In saying this, I do not mean to direct any criticism at the lawyers involved. In the absence of clear guidance from the court as to what is or is not admissible or of probative value, the parties and their advisers cannot be blamed for covering all the possibilities. Furthermore, in view of what was said by the Court of Appeal in SKM, the fact that the plaintiff felt obliged to give discovery of its research and development leading to the making of the invention cannot be faulted.
However, there is much pressure now to reduce the cost of litigation in general and patent litigation in particular. Parties and the court must be astute to prevent the expenditure of time, effort and money on the filing and challenging of unnecessary evidence and discovery. As the Vice Chancellor said in Mölnlycke, secondary evidence on the issue of obviousness must be kept firmly in its place. If the evidence is of no weight it should be excluded from the outset. Evidence that others in the art did or did not make essentially the same development at or before the priority date of the patent should not be given unless it can be shown that those others were starting from or had brought to their attention all or some of the prior art pleaded in the case or the evidence is in some other way really relevant to the issues in dispute.
We desire to make the rule as large as we can with due regard to propriety; and therefore I desire to give as large an interpretation as I can to the words of the rule, "a document relating to any matter in question in the action." I think it obvious from the use of these terms that the documents to be produced are not confined to those, which would be evidence either to prove or to disprove any matter in question in the action;
It seems to me that every document relates to the matters in question in the action, which not only would be evidence upon any issue, but also which, it is reasonable to suppose, contains information which may--not which must--either directly or indirectly enable the party requiring the affidavit either to advance his own case or to damage the case of his adversary. I have put in the words "either directly or indirectly," because, as it seems to me, a document can properly be said to contain information which may enable the party requiring the affidavit either to advance his own case or to damage the case of his adversary, if it is a document which may fairly lead him to a train of inquiry, which may have either of these two consequences.
He can obtain his own expert's opinion upon whether the steps taken by the inventor were the steps which the ordinary skilled man would or could take and whether such steps were no more than steps which would or should have been obvious to any skilled man
This is not the stuff of "standard disclosure" at all. It is "chain of inquiry" stuff of the Peruvian Guano kind appropriate at the time SKM was decided.
[12] I must explain why I think the attempt to approximate real people to the notional man is not helpful. It is to do with the function of expert witnesses in patent actions. Their primary function is to educate the court in the technology – they come as teachers, as makers of the mantle for the court to don. For that purpose it does not matter whether they do or do not approximate to the skilled man. What matters is how good they are at explaining things.
[13] But it also is permissible for an expert witness to opine on an "ultimate question" which is not one of law. I so held in Routestone v Minories Finance [1997] BCC 180 and see s.3 of the Civil Evidence Act 1972. As regards obviousness of a patent Sir Donald Nicholls V-C giving the judgment of the Court of Appeal in Mölnlycke v Proctor & Gamble [1994] RPC 49 at p. 113 was explicit on the point.
Disclosure of experiments
Lord Justice Rix:
Lord Justice Pill:
"It is for this reason that contemporary events can be of evidential assistance when testing the experts' primary evidence."