The patentee had invented a method for storing CDs. The patentee sought leave to appeal a finding that its patent was invalid, and if successful, to appeal a finding that the defendant’s apparatus was not infringing.
Held: The application for leave to appeal did involve a judicial finding sufficient to satisfy the obligation under TRIPS. Nevertheless, the substantive argument presented did support leave being given. However the patent itself was obvious. The success of a later version demonstrated not the value of the original idea, but the virtue of good design. Had the patent been valid, the later design was not infringing.
Jacob LJ restated the Windsurfer principles as to obviousness in patents claims: ‘(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 in question 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?’
Mummery LJ, Keene LJ, Jacob LJ
 EWCA Civ 588,  FSR 37,  BusLR D117
England and Wales
Updated – Windsurfing International Inc v Tabur Marine (Great Britain) Limited CA 1985
Testing Validity of a Patent
A patent was challenged where the windsurf board had been shown as a primitive prototype to have been built and used in public by a twelve year old boy. The court set out the four steps required to be taken when ascertaining the validity of a . .
Cited – Biogen Plc v Medeva Plc HL 31-Oct-1996
The claim patented sought to protect a genetic molecule rather than a whole mouse namely that the molecule would, if inserted into a suitable host cell, cause the cell to make antigens of the Hepatitis B virus. A recombinant method of making the . .
Cited – Union Carbide Corporation v BP Chemicals Limited ChD 31-Jul-1997
The parties disputed the validity of patents concerning the processes for producing polymers.
Held: The patents were upheld. Jacob J explained the nature of invention underlying the right to apply for a patent: ‘Invention can lie in finding . .
See Also – Pozzoli Spa v BDMO Sa and others PatC 21-Jun-2006
Cited – W L Gore and Associates Gmbh v Geox Spa PatC 7-Oct-2008
The claimants sought a declaration of non-infringement of four patents relating to waterproof fabrics for shoes.
Held: The patents could not be set as invalid for obviousness. . .
Cited – Symbian Ltd v Comptroller General of Patents CA 8-Oct-2008
No Pattern Established to Patent Computer Systems
The Comptroller appealed against the decision in Chancery to grant a patent to the clamant for an invention which the comptroller said should have been excluded from protection under section 1(2) as a computer program. It was argued that the UK was . .
Cited – Les Laboratoires Servier and Another v Apotex Inc and others ChD 9-Oct-2008
The claimant had alleged that the defendant was producing generic drugs which infringed its rights in a new drug. The patentee had given a cross-undertaking in damages, but the patent was later ruled invalid. The court had to assess the damages to . .
Cited – William Mark Corporation and Another v Gift House International Ltd IPEC 22-Aug-2014
The claimant said that the defendants imported model airplanes infringing the claimant’s patents, and registered community designs. The defendant responded that the patents were invalid.
Held: Some but not all of the patent claims were valid, . .
Cited – Les Laboratoires Servier and Another v Apotex Inc and others CA 9-May-2008
Appeal against finding that patent was invalid for lack of novelty, but that if valid the defendant’s product would have infringed it. . .
Cited – Actavis Group Ptc EHF and Others v Icos Corporation and Another SC 27-Mar-2019
The court considered: ‘the application of the test of obviousness under section 3 of the Patents Act 1977 to a dosage patent. In summary, a patent, whose validity is not challenged, identified a compound as an efficacious treatment but did not . .
Lists of cited by and citing cases may be incomplete.
Updated: 23 January 2022; Ref: scu.253549