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||Neutral Citation Number:  EWHC 1061 (Pat)
||Case No: HP 2015 000 061
IN THE HIGH COURT OF JUSTICE
||Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
B e f o r e :
THE HON. MR JUSTICE BIRSS
||(1) POSITEC POWER TOOLS (EUROPE) LIMITED
(2) POSITEC (MACAO COMMERCIAL OFFSHORE) LIMITED
(3) POSITEC GERMANY GmbH
||- and -
James St Ville (instructed by Dentons UKMEA) for the Claimants
Mark Chacksfield (instructed by Bird & Bird) for the Defendant
Hearing dates: 4th May 2016
HTML VERSION OF JUDGMENT
Crown Copyright ©
Mr Justice Birss :
- This case is about robotic lawn mowers. Patent EP 1 512 053 entitled "Electronic demarcating system" claims a method of operating an automatic device (such as a robotic lawnmower) under the guidance of an electronic "directing" system. The directing system marks out the edges of the lawn using a cable under the ground. The robotic lawnmower stays on the lawn and avoids mowing the flower beds by sensing the magnetic field created by the electric current in the cable. The current is pulsed and the characterising feature of claim 1 requires the sensing system in the robot to synchronise the time intervals within which it detects magnetic fields based on the properties of the current pulse.
- The claimants (Positec) wish to sell robotic lawnmowers in the UK. They contend that the patent is invalid and/or that particular models of their robotic lawnmower products (models WG749E, WG795E and WG795E.1) do not infringe the patent. This action is in the form of a claim for revocation of the patent and for declarations of non-infringement. There is an issue about the scope of the declaratory part of the action but that is not material. The defendant, Husqvarna, is the patentee.
- The invalidity plea is that the invention claimed lacks novelty or is obvious over a prior international patent application published as WO 99/59042 ("Peless"). There is also a reference to common general knowledge but at the hearing counsel explained that Positec had not yet decided whether it was advancing an allegation that the patent was obvious over common general knowledge alone or whether the reference to common general knowledge in the Grounds of Invalidity was simply on the basis that the invention was said to be obvious over Peless in the light of common general knowledge. That will be clarified by a Statement of Case in due course. At this stage therefore there is no articulated case of obviousness over common general knowledge alone.
- Some directions at an early stage in the proceedings were given by consent in March which led to the trial being fixed for November 2016. This is the CMC. Various case management issues were discussed and resolved at the hearing. One point is that as regards disclosure relating to infringement, directions on that topic are agreed. Positec will prepare a Product and Process Description in accordance with CPR PD 63 paragraph 6.1. This judgment relates to disclosure on validity. Some outstanding points on the costs budgets will be dealt with separately.
- In the exchanges before the CMC Husqvarna's Disclosure Report was prepared on the footing that disclosure on validity would be produced in accordance with CPR PD 63 paragraph 6.1, in other words based on the four year window. However in the course of the negotiations about directions running up to the hearing Husqvarna changed tack and contended that no validity disclosure should be ordered. Clearly Husqvarna's Disclosure Statement is significant but Positec (rightly) did not argue that it was not open to Husqvarna to submit that no such disclosure should be ordered even though it had previously agreed to do it.
- At the hearing I reserved judgment on the issue of validity disclosure. The arguments raised an important point on the correct approach to disclosure in the light of CPR r31.5 and how that approach applies to the question of whether to order disclosure of documents arising from the making of the invention in an obviousness case.
- Disclosure from the patentee in obviousness cases has been a notorious point for many years. The four key developments prior to the modern form of CPR r31.5 are: SKM v Wagner Spraytech  RPC 497; the introduction of the four year validity disclosure window in 1995 in the RSC, now CPR PD 63 para 6.1; Nichia v Argos  EWCA Civ 741; and the reform of the Patents County Court (now Intellectual Property Enterprise Court) in 2010.
- The background to the problem was fully described by Jacob LJ in Nichia v Argos. I will not repeat everything he said there. Very briefly, the issue of obviousness is an objective one. The person skilled in the art is a normative legal construct and, while that notional person must have characteristics grounded in reality (see Teva v Leo  EWCA Civ 779), no real person is the same as the notional person skilled in the art. They know more but foresee less than real skilled people. They know all common general knowledge but nothing else and always read with interest even the most obscure (but public) documents. They only foresee what is obvious because, unlike real technical people, they take no inventive steps. Therefore evidence of what the inventor actually did can often be of little value and since, by definition they did make the invention, there is always a risk of hindsight. To establish that such evidence is probative can descend into a satellite dispute about how similar the inventor was the person skilled in the art. This sort of evidence is a species of the genus described as secondary evidence in Mölnlycke v Procter & Gamble  RPC 49. It is secondary evidence as distinct from the primary evidence, which is from suitably qualified expert witnesses, consisting of their opinions and the technical reasons for them. Mölnlycke stands for the proposition that this evidence must be kept firmly in its place. But the problem is that there are cases in which secondary evidence can be crucial, see Schlumberger v EMGS  EWCA Civ 819. For example experienced patent litigators have known for years that in an appropriate case "telling the invention story" by calling the inventor to explain how he or she laboured in the dark and endured the discouragement of a sceptical world can be a winning strategy to prove non-obviousness.
- The reality is that in most patent cases secondary evidence, including disclosure from the patentee about what the inventor did is a costly distraction but in a minority it can be important. This reality has been true for decades. After the 1977 Patents Act came into force a serious attempt was made to limit disclosure on obviousness in SKM v Wagner Spraytech. Mr Gratwick QC, at that time the doyen of the Patent Bar, tried and failed to persuade the Court of Appeal to overturn an order for that sort of disclosure. Before me counsel for Husqvarna submitted that that case was not of significant assistance as it was old and based on the Peruvian Guano approach which no longer applies. I do not go that far. In his judgment Oliver LJ (as he then was) explains a number of reasons why disclosure of what can be called compendiously the inventor's notes should be given when obviousness was in issue. Although the procedural context in which the problem arises today is different, parts of the judgment still have a bearing on the issue today.
- In the early 1990s the Patents Court took another look at disclosure. The concern was the familiar one that disclosure could be costly and often the material appeared to have little utility. Some suggested disclosure should be abolished altogether. However the obligation to disclose documents which may be adverse to a party's case was seen as a critical aspect of a fair trial at common law and so a balance had to be struck. A special set of rules was introduced in the RSC in 1995 (now CPR PD 63 r 6.1) which limited the parties' initial disclosure obligations in various ways. On validity a four year time window (two years either side of the priority date) was introduced. On infringement the defendant could produce a sworn description of the product or process (a PPD) instead of giving disclosure initially and on commercial success schedules of relevant information were required up front. In all these cases further focussed disclosure could be ordered later if needed. The concern was that this would lead to sharp practice. It did not happen. The volume of material dropped considerably but the key material was still provided and disputes became much less common.
- By the mid 2000s the approach in patents was well established. However even though validity disclosure is not as voluminous (and therefore costly) as it used to be, it is still costly and in most obviousness cases of no utility. In 2007 Pumfrey J refused to order disclosure on obviousness in Nichia v Argos and the matter went to the Court of Appeal. Jacob LJ held that "the time had come to hold that proportionality requires that normally such disclosure should not be ordered" (para 54). Jacob LJ decided that he would therefore refuse the appeal. However Rix and Pill LJJ did not agree and with "great diffidence and reluctance" refused to follow him. In a now famous passage Rix LJ emphasised that:
"Above all, it would be against the interests of justice if documents known to exist, or easily revealed, which would harm a party's own case or assist another party's case need not be disclosed because of a blanket prima facie rule against any standard disclosure. Once such a principle of disclosure were known to hold sway, dishonest or cavalier litigants would reap an unmerited advantage, contrary to the interests of justice."
[end of paragraph 72]
- Standard disclosure has two dimensions. One dimension is the scope of the issues relating to which disclosure should be given and the other is the nature of the search to be carried out for documents relating to any given issue. The debate in the Court of Appeal in Nichia v Argos was not about the second dimension but about the first. Rix and Pill LJJ were concerned to ensure that the obligation to give disclosure on all issues remained in place (see also paragraph 73). Part of their reasoning was that the introduction of the requirement for a reasonable search mitigated the cost of that approach (see paragraphs 71-75).
- In 2008 a working group of the IP Court Users Committee led by Arnold J reported on reforming the Patents County Court. This was picked up in the review by Jackson LJ and brought about a reformed procedure in 2010 in what is now the Intellectual Property Enterprise Court (IPEC). A key aspect of the reform related to disclosure. In IPEC a party has no automatic right to any disclosure from their opponent at all. Instead it is dealt with at the CMC on an issue by issue basis using a cost/benefit test. The cost/benefit test was already an explicit part of active case management in accordance with the overriding objective (c.f. CPR r1.1 (2)(h)). Applied in this context it balances the likely probative value of the documents against the cost or difficulty of the search.
- Again the concern was sharp practice. That concern has not been borne out. Generally disclosure on obviousness has not been ordered in the PCC/IPEC since 2010, applying the issue based approach using a cost/benefit test. Nevertheless today IPEC is successful. Litigants are not deterred by the cost of disclosure from enforcing their IP rights or defending themselves. Importantly the litigants know that if it is appropriate disclosure on relevant issues will be required.
- One significant benefit in the IPEC's rules is that they do not involve prima facie assumptions that a party must give disclosure on all issues or tender witnesses for cross-examination on all issues. This creates a space in which to discuss a proportionate way of limiting these things. Without rules like those in the IPEC, whenever a litigant proposed an approach which was different from and more limited than what was normally done, their opponent always assumed that something was being hidden under the cloak of proportionality. Of course litigants do have things they would rather hide but not always, and a concern about costs in civil litigation is hardly surprising.
- In 2013 as a further aspect of the Jackson reforms, CPR Part 31 was amended into its current form. Husqvarna submits that this makes a material difference to the application of Nichia v Argos. Essentially Positec submit that what was said by the majority in Nichia v Argos is as relevant to this action as it was to that one. They contend that disclosure on obviousness should be given by the patentee Husqvarna. In their skeleton argument the point is developed on two bases which really derive from the part of SKM v Wagner Spraytech cited by Jacob LJ and Pill LJ in Nichia at paragraph 34 and 87. The first is that knowledge of the inventor's experiments can assist an applicant for revocation in allowing it to obtain an opinion whether the steps actually taken by the inventor were steps which an ordinary skilled person would or could take and whether they would or should have been obvious. The second is that the applicant for revocation could use any knowledge which it acquires regarding the inventor's experiments or researches in cross-examination of the patentee's technical expert by reference to what the inventor did.
- It is relevant to note that Positec's submission was put entirely generally. It was not focussed on the facts of this particular case beyond the fact that obviousness is pleaded. I asked counsel if there was anything specific about the facts of this case which supported a need for disclosure from the patentee on the issue. Counsel replied that there was and explained a bit about the validity case over Peless. I will consider that below.
- Positec are also concerned that the change of heart by Husqvarna, in deciding now to oppose disclosure, is because Husqvarna has something to hide. They submit that standard disclosure on obviousness in patent cases is in the interests of justice and should be ordered.
- Husqvarna does not accept there is any basis on which to draw an inference that it has something to hide and opposes disclosure, making two points. First the legal landscape has changed from the one applicable in Nichia as a result the amendments to CPR Part 31 following the Jackson reforms. Second, disclosure on obviousness in this case would be disproportionate. The origin of this second point lies in Husqvarna's case that the action is of very low value but it is maintained in any event regardless of value. Husqvarna submits that no specific case has been made to justify disclosure on obviousness in these proceedings and there is no reason to think it would be of assistance. Husqvarna does not accept that the argument advanced by Positec in response to a question from the bench amounts to a sufficient reason.
- I turn to CPR Part 31 and rule 31.5 in particular. By r31.5(2), unless the court otherwise orders, paragraphs (3) to (8) of r31.5 apply to all multi-track claims other than claims including a claim for personal injuries. There is no reason to "otherwise order" in this case. Rules (3) to (6) provide for disclosure reports, EDQs and discussions before the CMC. Save for the point about the effect of Husqvarna's Disclosure Report, these paragraphs are not germane to the issue before me. The key provision is r31.5 (7) which provides as follows:
(7) At the first or any subsequent case management conference, the court will decide, having regard to the overriding objective and the need to limit disclosure to that which is necessary to deal with the case justly, which of the following orders to make in relation to disclosure –
(a) an order dispensing with disclosure;
(b) an order that a party disclose the documents on which it relies, and at the same time request any specific disclosure it requires from any other party;
(c) an order that directs, where practicable, the disclosure to be given by each party on an issue by issue basis;
(d) an order that each party disclose any documents which it is reasonable to suppose may contain information which enables that party to advance its own case or to damage that of any other party, or which leads to an enquiry which has either of those consequences;
(e) an order that a party give standard disclosure;
(f) any other order in relation to disclosure that the court considers appropriate.
- Two things emerge from this. First is the reference to the overriding objective and the need to limit disclosure to that which is necessary to deal with the case justly. This helps to focus the court's mind on the task to be undertaken. Second, and critically, is that the effect of this provision is that standard disclosure is one of six options. Counsel for Husqvarna submitted that this meant that standard disclosure was not the default option any more. I agree. The Chancery Guide (paragraph 17.35) makes the same point. As the Guide states, careful consideration should be given to the alternatives to standard disclosure.
- In Nichia v Argos Rix LJ was concerned not to introduce a "blanket prima facie rule against standard disclosure". The amended form of CPR r31.5(7) does not go as far as introducing such a rule but in my judgment it does have the effect of providing that there is no longer a blanket prima facie rule in favour of standard disclosure.
- It is certainly not the case, and counsel did not suggest, that the fact that no disclosure at all is one of the options (at (a)), means that a party seeking an order for some disclosure has a difficult burden to discharge. That would not be appropriate. Nevertheless any court deciding which of the options to adopt has to have some basis for that selection. Rule 31.5 expressly maintains disclosure as a feature of key importance to the interests of justice in civil litigation but the rule replaces a single approach (standard disclosure) with a series of options. The current form of r31.5 means that the selection of the correct approach is something governed not by a prima facie rule but by the overriding objective to deal with cases justly and at proportionate cost.
- In this case the question of whether to order standard disclosure is in substance the same as the question of whether to order disclosure on obviousness under r31.5(7)(c), i.e. on an issue by issue basis. That is because of the nature of patent disputes. It is common ground that disclosure on infringement should be given. The fact that it is being given by the mechanism of a PPD under PD 63 paragraph 6.1 does not alter that. Stated at a high level of generality there are only two other issues in the case, validity and a point about whether Positec has a sufficient commercial interest to bring the declaratory proceedings. As to the latter, they plainly do. The point was resolved at the CMC and is no longer live. So the only other issue is validity and within that the only issue on which disclosure might matter is obviousness. There is no allegation of prior use, this is not an inevitable result case nor is there any allegation of insufficiency. So issue based disclosure on obviousness would be the same as standard disclosure.
- In either case, the question is whether it would be in accordance with the overriding objective to make such an order. Proportionality will be important and two major considerations are the likely probative value of the material which could be produced and the cost of doing so, putting that cost into the context of the proceedings as a whole (CPR r1.1 (2)(c) and 1.4(2)(h)). In the end the question comes back to fairness and the interests of justice.
- The parties filed evidence about the likely value of the proceedings, with witness statements from the solicitors, Campbell Forsyth for Positec and Tim Harris for Husqvarna. Husqvarna contended that the dispute was of very low value. This was because as far as Mr Harris had been able to tell Positec had sold very few (about 5) relevant robotic lawnmowers in the UK. Positec contended that this was an action about the future market. Mr Forsyth explained that the parties were litigating other designations of the same patent elsewhere in Europe and that there was a large potential market for robotic lawnmowers in the UK in future. The overall market for lawnmowers is worth about £145 million per annum. So far robotic lawnmowers represent a very small part of the UK market (the UK seemingly being particularly resistant to the benefits of the robotic lawnmowers) but even if the products achieve only 5% penetration in the next few years, that is a very substantial market. The patent will not expire until 2023 and Husqvarna's own materials suggest they expect UK sales in future to be significant. An individual product sells for something of the order of £1000.
- In my judgment the picture painted by Husqvarna of the value and importance of this dispute is wrong. It is not a case of very low value but nor is it at the high end of the cases in the Patents Court. The patent is not essential to a global telecommunications standard nor does it cover a blockbuster pharmaceutical. The dispute is between rival manufacturers of consumer products concerning entry into a substantial market. Based on the evidence before me the likely value of that market in terms of turnover is measured in millions although probably not tens of millions. Based on the cost budgets on file, the costs on each side are likely to be in a range between about £0.8-1.1 million. This is not a case in which those likely costs will swamp the value of the dispute. Whether a patent case like this should cost that much is a different question. This case is worth fighting even at those costs.
- I turn to consider the likely cost of the disclosure sought. The proposed budgeted cost of disclosure from Husqvarna is £44,000. Given the nature of the issues, that is essentially the cost of the obviousness disclosure. Husqvarna submitted that the overall costs which would be incurred by ordering obviousness disclosure would be about £155,000 based on adding that sum to Positec's budgeted sum for disclosure of about £111,000. That calculation is not right because Positec's budget figure, while it included an estimate for considering the disclosure from Husqvarna, also covered the PPD. Equally neither of these figures take account of the knock on effects of dealing with what is disclosed in terms of the expert's costs and trial, assuming the material is thought to have any utility at all. Doing the best I can, I estimate that a sum of about £90,000 overall represents the minimum cost to these proceedings as a whole of taking the step of ordering this disclosure, in other words assuming it does not take up any time at trial (as it usually doesn't). So the cost is not a very substantial aspect of the overall costs of this litigation but neither is it in any sense a trivial sum of money.
- I turn to the likely probative value of this material. If the patentee was relying on commercial success then it might be that disclosure of this sort should be given, but that is not pleaded and not in issue. If the patentee was calling the inventor as a witness then I have little doubt disclosure of this sort should be given. However Husqvarna confirmed, in response to a question from me, that it had no plans to do this. If the patentee was relying on the alleged reactions of others to the invention to support its case on inventive step then again, disclosure of this kind might be pertinent but again Husqvarna confirmed in response to a question that it had no plans to do so. Nor does Husqvarna have any plans to rely on its own internal documents in support of inventive step, which would be another reason why disclosure of this kind should be given.
- If Husqvarna showed its own internal documents to its expert then production of those documents and disclosure on the issue would be ordered (cf Pill LJ in Nichia paragraph 86) but given that expert's reports are required to state what documents have been provided to the expert and their instructions, if that occurs it can be dealt with.
- If the law required disclosure from patentees which might reveal an unpleaded ground of invalidity then that could be a reason to order this sort of disclosure in every case, but the issues are defined by the pleadings and disclosure is not ordered in the Patents Court with that objective in mind.
- Positec rely on the two generic reasons given in SKM v Wagner Spraytech and referred to in Nichia v Argos why this sort of material should be disclosed in a patent case. Neither of them in my judgment establishes that based on what I know about the issues in this case, the order for disclosure should be made.
- I will start with the second reason (use in cross-examination). It was the subject of a disagreement between Jacob LJ and Pill LJ in Nichia (see paragraphs 34 and 87). The way it was put by Oliver LJ was that the inventor's documents would show steps taken by "admittedly a skilled man" and those could be put in cross-examination. But as Jacob LJ pointed out, that assumes that the inventor is admittedly a skilled man, in the sense of being equivalent to the notional person skilled in the art, which he may or may not be. Pill LJ thought that Oliver LJ's reason was sound if the word "inventor" was used in Oliver LJ's sentence instead of "skilled man". I respectfully prefer Jacob LJ's reasoning on this point (Rix LJ did not express a view on it). When one sees that the inventor may or may not be close to the notional person skilled in the art, cross-examination on obviousness based on that sort of document usually does not help. All that happens is one question is substituted for another.
- In my judgment, if obviousness is in issue then, without more, cross-examination using the inventor's documents is unlikely to be probative either at all or without opening up a further costly and uncertain dispute about the personal qualities of the inventor. There can be particular reasons in which it is relevant but, subject to one point addressed below, none of them are live in this case.
- The first reason derived from SKM v Wagner Spraytech is that the expert can look at the steps the inventor actually took and express a view whether they would have been obvious to a skilled person. In one sense this is rather odd. It seems to hypothesise that the expert has not thought of an obvious way to travel from the cited prior art to the claimed invention but then is shown what the inventor actually did (which ex hypothesi must not be stated in the patent) and then expresses a view that those steps are obvious. That sounds like an approach potentially tainted with hindsight. I am not persuaded that put this way the point adds anything to the cross-examination argument. There can be particular reasons why it may be useful on this basis but, subject to the one point below, none of them are live in this case.
- The point I have left over is Positec's one submission that on the particular facts of this case disclosure of the inventor's documents would be useful. The argument is as follows.
- The Peless prior art discloses using a wire to set a boundary around the edge of the lawn and another wire to go around an obstacle such as a flower bed. These wires will lie horizontally. The flux lines of the magnetic field induced by the current in the wire will curl around the conductor, following Ampere's law and the right hand rule. A sensor made of a coil in a horizontal orientation on the robot will sense the flux relatively easily as it approaches the wire because the flux lines at that stage will be perpendicular to the plane of the sensor. However once the sensor is close to or on top of the wire, the flux lines will be in the plane of the sensor coil and less readily detectable. These are basic principles for a skilled person seeking to put Peless into practice or make obviousness developments from it and Counsel submitted that it would be relevant to see if this straightforward explanation of the landscape was contained within the inventor's notes, allowing Positec to test whatever the expert called by Husqvarna said against the reality of the situation.
- This is not in fact something special about the present case but it is I think an attractive way of putting the SKM v Wagner Spraytech points, effectively rolled up together and avoiding hindsight. The argument is that Positec will say that a particular way of thinking from the prior art is what a notional skilled person would do. If that way of thinking is reflected in the inventor's documents then Positec contends their expert will be able to comment on it and it will support the case that the invention is obvious. However, attractive though it is, in my judgment it suffers from the same essential difficulty which was identified by Jacob LJ, i.e. that its relevance depends on how close to the notional skilled person the inventor(s) actually are and how close the context in which they were working is the same as the context in which the notional skilled person is to be placed into for obviousness (knowing only the common general knowledge and reading Peless with interest but nothing else).
- Furthermore and importantly, at this stage in this action it is not clear whether it is even in dispute that a person skilled in the art would think in the manner described. It may not be. If the point is not in issue, there is no reason to order disclosure in relation to it. Ordering disclosure now when the dispute may never arise is just a waste of time and money, as long as there is time once the issues have crystallised to produce it if required.
- Even if the clarification of this issue has to wait until exchange of expert's reports, I am sure there is room in the timetable for the disclosure if it really was seen to be required after the fact evidence and experts' reports are exchanged. The date for this is 26th September and the trial is not until 28th November. The evidence did not address this head on but based on the information in the Disclosure Report and Husqvarna's cost budget, I would expect the entire exercise, if really necessary, could be done in two or three weeks.
- So standing back, I remind myself that Husqvarna did produce a Disclosure Report, signed with a statement of truth, which proposed validity disclosure based on the four year window. It now says that such disclosure should not be ordered. If thought this change of heart was reflective of a party who had found a "smoking gun" and was seeking to hide it, I would have no hesitation in ordering disclosure. But that inference is unwarranted. Apart from anything else, in a vast majority of the minority of cases in which obviousness disclosure from a patentee plays any material role in litigation at all, it helps the patentee. So the inference is inherently improbable. Moreover although I have not accepted Husqvarna's submission on the actual value of these proceedings, I have no doubts about the sincerity of its concern to keep the cost of this litigation under control.
- If Husqvarna changes its mind about any of the matters mentioned in this judgment about the manner in which it puts its case on obviousness then it must tell Positec immediately. In any event once the fact and expert evidence is exchanged the issues will be clarified. There is still room in the timetable for focussed disclosure at that stage if ordered.
- I am well aware that refusing this disclosure runs counter to the Court of Appeal in Nichia v Argos and I have the concerns described by Rix and Pill LJJ firmly in mind. However the change in CPR r31.5(7) means that it is not a binding authority. Experience in IPEC shows that the obligation to disclose documents which may be adverse to a party's case can be preserved as a critical aspect of a fair trial at common law within an issue by issue based disclosure regime in which disclosure on some issues, such as obviousness, is not ordered because the likely probative value of what is produced is not worth the cost. Applying what I perceive to be the right approach under the Civil Procedure Rules as they now are, I am not satisfied that an order for standard disclosure, or an order for issue based disclosure including the issue of obviousness, would be in accordance with the overriding objective in this case. This is an ordinary obviousness case with no special features which might make such disclosure worth the cost.
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