B alleged infringement by M of its patented nebulizer. M replied saying that the claims failed for obviousness. Features of the nebulizer were admittedly old and well known, but the claimant asserted a new mechanism which reduced the size of the droplets, increasing its efficiency.
Held: The patent was invalid for obviousness.
Laddie J set out the basis for making such assessments. The aims and specification were to be read together; though the insert at issue had little practical effect, it could not be ignored; the court should be wary of disregarding older prior art in a form of ageism, obviousness did not reduce with time; in this case an uninvetive skilled man would have considered variations in the older art; the claim made for the baffle used was wide enough to encompass any baffle; and a development which might be commercially unviable might still be obvious.
Laddie J said: ‘It is not legitimate to define the inventive step as something narrower than the scope of the relevant claims. In particular it is not legitimate to identify a narrow sub-group of embodiments falling within the claim and which have certain technical advantages and then to define the inventive step in terms which apply to that sub-group but not the rest of the claim.’
and ‘if a patentee has chosen to define the characterising part of his claim in narrow terms the Court should not rewrite it in broader language simply because it thought a wider form of wording would have been easy to formulate.’ and ‘First a route may still be an obvious one to try even if it is not possible to be sure that taking it will produce success, or sufficient to make it commercially worthwhile. The latter point is inherent in Johns-Manville Corporation’s Patent [1967] RPC 479, a decision of the Court of Appeal under the Patents Act, 1949 which is just as relevant to obviousness under the 1977 Act. 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. If a number of obvious routes exist it is more or less inevitable that a skilled worker will try some before others. The order in which he chooses to try them may depend on factors such as the ease and speed with which they can be tried, the availability of testing equipment, the costs involved and the commercial interests of his employer. There is no rule of law or logic which says that only the option which is likely to be tried first or second is to be treated as obvious for the purpose of patent legislation.’
‘Obviousness is tested against the mental and developmental norm of a notional uninventive person skilled in the art. In doing that the law is protecting not only established businesses which may wish to adopt new products, processes or designs or modify existing ones but also the new entrant who has employed persons skilled in the art to help him get into the market. Each of those categories of trader must be free to adopt what is obvious’ and
‘ On the basis of this they say there is no reason why it should have been obvious to modify the prior art in any particular direction. That it appears to me, is a non sequitur. The fact, if it be one, that existing commercial products are highly successful and satisfactory does not indicate that there are no obvious modifications to make to them. It merely demonstrates that there may be little incentive to those already making those products to change the design – a quite different matter.’
and ‘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. If a number of obvious routes exist it is more or less inevitable that a skilled worker will try some before others. The order in which he chooses to try them may depend on facts such as the ease and speed with which they can be tried, the availability of testing equipment, the costs involved and the commercial interests of his employer. There is no rule of law or logic which says that only the option which is likely to be tried first or second is to be treated as obvious for the purpose of patent legislation.
For these reasons a Simpkins list of prior art proposals, as furnished in this case, will frequently be of little assistance in resolving the issue of obviousness. Such a list may demonstrate that the particular route followed by the patentee was studiously avoided by others in the art in which case it may be of some assistance in countering arguments of obviousness. But it may only show that a number of other designs are possible and have been proposed. This does not strengthen the patentee’s case. That is particularly so where, as here, there is no evidence that any of the earlier patentees had used as their starting point the prior art pleaded.’
and ‘On the basis of this they say there is no reason why it should have been obvious to modify the prior art in any particular direction. That, it appears to me, is a non sequitur. The fact, if it be one, that existing commercial products are highly successful and satisfactory does not indicate there are no obvious modifications to make to them. It merely demonstrates that there may be little incentive to those already making those products to change the design – a quite different matter.’
Laddie J
[1996] RPC 635
Patents Act 1977
England and Wales
Citing:
Cited – Johns-Manville Corporation’s Patent CA 1967
A patent for a method of producing asbestos cement was challenged for obviousness.
Diplock LJ considered that a development should be treated as obvious if ‘the person versed in the art would assess the likelihood of success as sufficient to . .
Cited by:
Cited – Rocky Mountain Traders Limited and Hewlett Packard Gmbh; Westcoast Limited and Fellowes Manufacturing (UK) Limited CA 20-Dec-2000
The claimant appealed an order finding its patents for mechanisms for labelling CDs invalid for obviousness.
Held: the judge had applied the correct tests for obviousness, and the view taken by the judge of the expert evidence was not open to . .
Cited – Discovision Associates, Pioneer Electronics Capital Ltd and Pioneer Electronics (USA) Inc v Disctronics (UK) Ltd, Disctronics Manufacturing (UK) Ltd, and others PatC 29-Jul-1998
Action for infringement of six patents . .
Cited – Sara Lee Household and Body Care UK Limited v Johnson Wax Limited PatC 22-Nov-1999
Patent infringement allegation . .
Cited – Boston Scientific Limited, Boston Scientific International BV v Julio C Palmaz, Expandable Grafts Partnership; Palmaz’s Patents CA 20-Mar-2000
. .
Cited – Wheatley, Bortec Limited v Drillsafe Limited, Force Group Services Plc, Foster, Foster, Carter, Davies CA 25-Jul-2000
In a claim for infringement of a patent, where variations on a patent were to be considered, the court should look to the three tests set down in Improver (‘the Protocal questions’), and the claim should be interpreted in a purposive and contextual . .
Cited – Coflexip SA, Coflexip Stena Offshore Ltd v Stolt Comes Seaway MS Ltd, Stolt Comex Seaway Ltd, Stolt Comex Seaway SA CA 31-Jul-2000
Any injunction to restrain passing off will need to be carefully drafted so not to give relief beyond that justified by the findings. . .
Cited – Dyson Appliances Ltd v Hoover Ltd PatC 3-Oct-2000
The plaintiff alleged infringement of its European Patent in a vacuum cleaning appliance. The defendants sought its revocation on the statutory grounds of lack of novelty, obviousness and insufficiency, and for threats. . .
Cited – Sara Lee Household and Body Care Ltd v Johnson Wax Limited CA 20-Nov-2001
. .
Cited – Pharmacia Corporation, G D Searle and Company, Pfizer Inc v Merck and Co, Inc, Merck, Sharp and Dohme Limited CA 14-Dec-2001
Question as to obviousness of patent. . .
Cited – Teva Pharmaceutical Industries Ltd Arrow Generics Ltd, Generics (UK) Ltd v Istituto Gentili Spa, Merck and Co Inc PatC 22-Jan-2003
. .
Cited – Cipla Ltd and others v Glaxo Group Ltd; Glaxo Group Ltd’s Patent PatC 19-Mar-2004
. .
Cited – Schering-Plough Ltd v Norbrook Laboratories Ltd ChD 18-Nov-2005
. .
Cited – GE Healthcare Ltd v Perkinelmer Life Sciences (UK) Ltd and Another PatC 17-Feb-2006
Action for infringement of European Patent (UK) No 1,007,971 entitled ‘Scintillation Proximity Test’ . .
Cited – Ivax Pharmaceuticals (UK) Ltd v Chugai Seiyaku Kabushiki Kaisha PatC 10-Apr-2006
Cross claims for patent infringement and for revocation . .
Cited – Ivax Pharmaceuticals UK Ltd v Akzo Nobel Nv ChD 22-May-2006
. .
Cited – Generics (UK) Ltd and others v H Lundbeck A/S PatC 4-May-2007
Kitchin J said: ‘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 . .
Cited – Actavis Ltd v Merck and Co Inc PatC 6-Jun-2007
Application for revocation of patent . .
Cited – Teva Pharmaceutical Industries Ltd and Another v Merrell Pharmaceuticals Inc and Another ChD 12-Oct-2007
. .
Cited – Research In Motion UK Ltd v Visto Corporation PatC 28-Feb-2008
. .
Cited – Abbott Laboratories Ltd v Evysio Medical Devices Ulc PatC 21-Apr-2008
Patent claims – for revocation and in answer in infringement. . .
Cited – Aerotel Ltd v Wavecrest Group Enterprises Ltd and others PatC 14-May-2008
Patent invalid. . .
Cited – Aerotel Ltd v Wavecrest Group Enterprises Ltd and others PatC 23-May-2008
. .
Cited – Armour Group Plc v Leisuretech Electronics Pty Ltd PatC 14-Nov-2008
. .
Cited – Actavis UK Ltd v Novartis Ag PatC 16-Jan-2009
Application to revoke patent for obviousness and insufficiency . .
Cited – Generics (UK) Ltd v Daiichi Pharmaceutical Co Ltd and Another CA 2-Jul-2009
validity of patent . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 13 December 2021; Ref: scu.188266