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You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Positec Power Tools (Europe) Ltd & Ors v Husqvarna AB [2016] EWHC 1061 (Pat) (10 May 2016) URL: https://www.bailii.org/ew/cases/EWHC/Patents/2016/1061.html Cite as: [2016] WLR(D) 244, [2016] Bus LR 714, [2016] EWHC 1061 (Pat) |
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CHANCERY DIVISION
PATENTS COURT
Fetter Lane, London, EC4A 1NL |
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B e f o r e :
____________________
(1) POSITEC POWER TOOLS (EUROPE) LIMITED(2) POSITEC (MACAO COMMERCIAL OFFSHORE) LIMITED(3) POSITEC GERMANY GmbH |
Claimants |
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| - and - |
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| HUSQVARNA AB |
Defendant |
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Mark Chacksfield (instructed by Bird & Bird) for the Defendant
Hearing dates: 4th May 2016
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Crown Copyright ©
Mr Justice Birss :
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.
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.
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.
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.
"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]
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.
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.
Positec
in response to a question from the bench amounts to a sufficient reason.
(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.
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.
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.
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.
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.
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.
Positec
to test whatever the expert called by Husqvarna said against the reality of the situation.
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).
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.