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England and Wales Court of Appeal (Civil Division) Decisions
You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Mexichem UK Ltd v Honeywell International Inc  EWCA Civ 473 (01 April 2020)
Cite as:  EWCA Civ 473
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ON APPEAL FROM THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (CHD)
Strand, London, WC2A 2LL
B e f o r e :
LORD JUSTICE FLOYD
| MEXICHEM UK LIMITED
|- and -
|HONEYWELL INTERNATIONAL INC.
(a company incorporated under the laws of the State of Delaware, USA)
Iain Purvis QC (instructed by Potter Clarkson LLP) for the Respondent
Hearing date: 17 March 2020
Crown Copyright ©
Lord Justice Floyd:
"23. … If the Arrow declarations sought by the claimant were made by the trial judge, then … those declarations would determine precisely what the declarations state, namely that, as of one or both of the priority dates, it was obvious to the skilled person, who has read Inagaki, to use ze and/or yf in the manufacture of a product for use as a refrigerant in an MAC. The declarations would foreclose any further argument in this jurisdiction on that point, but would go no further…
25. The declarations sought by the claimant are not … directed at clearing the path for the marketing of a particular product or for the use of a particular process. Rather they are aimed at providing a finding of obviousness which can serve as an unchallenged foundation for argument on the inventive step of inventions claimed in patents which may be granted to the defendant in the future."
) The judge had been wrong not to require any product or process to be identified.
ii) A declaration in the broad general terms countenanced by the judge was deprived of any real utility because there would be no resolution of anything until a second round of contested proceedings.
iii) The judge had been wrong to treat the question of inventive step as something which can be sliced up into a series of steps and dealt with step by step.
iv) The judge had made completely uncertain what was contemplated as being in issue in the proceedings in respect of the claimed declarations.
v) The judge had failed to keep clear the distinction in the patent system between instances where a class of products was being defined and instances where a specific product or process was being dealt with.
"30. There is no dispute that the declaration must be formulated with clarity. The facts ultimately declared by the court must be clear, otherwise the declaration will simply give rise to further dispute and defeat the purpose for which it is granted. The declaration must also be clear so that the court can know what technical issues it has to decide. The declaration must therefore identify the combination of features of the products and processes in question on which the assessment of obviousness is to take place."
"I do not accept that it is clear at this stage that either the general declaration or the PPD declaration is so unclear that it could not be granted. In each case GSK would have to establish that the relevant features were old or obvious at the level of generality at which they are pitched."
"I confess that I view with suspicion arguments to the effect that a new combination, bringing with it new and important consequences in the shape of practical machines, is not an invention, because, when it has been been established, it is easy to show how it might be arrived at by starting from something known, and taking a series of apparently easy steps. This ex post facto analysis of invention is unfair to the inventors and, in my opinion, it is not countenanced by English Patent Law."
"Where the pattern of the research programme which the notional skilled person would undertake can clearly be foreseen, it may be legitimate to take a step by step analysis .… the Technograph warning has no bearing in a case in which the steps which the notional skilled person would take can readily be ascertained without the taint of hindsight."
i) European Patent (UK) 2 314 654 ("654") claims a refrigerant composition containing at least 50% by weight of a fluoroalkene from a class defined by a Markush chemical formula, and a lubricant which is a polyalkylene glycol (a PAG), the composition having a Global Warming Potential (GWP) of not greater than 150. The Markush formula includes ze and vf. The specification explains at  that "commonly used lubricants such as [PAGs] that are used in refrigeration machinery with hydrofluorocarbon (HFC) refrigerants may be used with the refrigerant compositions of the present invention". There is no limitation to use in any particular type of refrigeration unit.
ii) European Patent (UK) No 2 277 972 ("972") claims a refrigerant composition comprising a fluoroalkene chosen from a class defined by a Markush formula and a lubricant chosen from a group which includes PAGs. The Markush formula includes ze and yf. At  the specification contains a similar statement about PAGs to that given in 654. There are no limitations as to proportions, or GWP, or as to use in any particular type of refrigeration unit.
iii) European Patent (UK) 2 314 655 ("655") claims the use of ze in an automotive air-conditioning system. There are no limitations as to lubricants or anything else, but  in the specification contains the now familiar suggestion to use PAGs (as used with HFCs).
iv) European Patent (UK) 2 277 977 ("977") claims the use in an automotive air-conditioning system of a composition containing at least 50% by weight a compound chosen from a Markush formula (which includes ze and yf) with the proviso that the use "is not of an azeotrope-like composition comprising [specific compounds] in an HVAC system".
v) European Patent (UK) No 2 085 422 ("422") claims use as a heat transfer composition of a composition comprising at least 5% by weight to 99% by weight of ze and one or more compounds selected from a group of other refrigerants, water and carbon dioxide.
vi) European Patent No 1 751 245 ("245") claims an azeotrope-like mixture comprising ze and another refrigerant. An azeotropic mixture of liquids is one which has a constant boiling point because the vapour has the same composition as the liquid mixture. The specification explains at  that "the use of azeotrope-like mixtures, which do not substantially fractionate on boiling and evaporation, is desirable. However, the identification of new, environmentally-safe, non-fractionating mixtures is complicated due to the fact that azeotrope formation is not readily predictable."
Lord Justice Lewison: