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 challenge in the way suggested. The patent was invalid for obviousness, and the appeal failed.
 EWCA Civ 347
England and Wales
Cited – General Tire and Rubber Company v Firestone Tyre and Rubber Company Ltd CA 1971
Degree of Novelty Required before patent grant
The court set out the test for novelty required to be established before a patent could properly be granted: ‘To determine whether a patentee’s claim has been anticipated by an earlier publication it is necessary to compare the earlier publication . .
Cited – Improver Corporation v Remington Consumer Products Ltd ChD 1989
Protocol Tests For Onbviousness Set Out
The invention was based upon the discovery that an arcuate rod with slits, when rotated at high speed, would take the hair off the skin by means of the opening and closing of the slits. The claim was to a rod in the form of an ‘helical spring’ but . .
Cited – Wheatley, Bortec Limited v Drillsafe Limited, Force Group Services Plc, Force Group Services Plc, Foster, Carter, Davies PatC 23-Feb-1999
Cited – Kastner v Rizla Ltd and Another CA 23-Jun-1995
Patent specification construction to be purposive- following ‘Catnic’. . .
Cited – British Westinghouse Electric and Manufacturing Company Limited v Braulik CA 1910
Between 1904 and 1906 British Westinghouse supplied 8 steam turbines. They were defective in design and used excessive quantities of steam. The railway company did not reject them but reserved its claim to damages for breach of contract. In 1907 the . .
Cited – Technograph Printed Circuits Ltd v Mills and Rockley (Electronics) Ltd 1972
The court advised of the need for caution to avoid hindsight when looking for obviousness in a patent. . .
Cited – Hallen Co v Brabantia (UK) Ltd CA 1991
Slade LJ said: ‘If the plea of obviousness is to succeed, the court has to be satisfied that it would have appeared to the hypothetical technician, skilled in the art but lacking in inventive capacity, worthwhile to coat the helix of a self-pulling . .
Cited – 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 – Brugger v Medic-Aid Ltd (No 2) ChD 1996
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 . .
Lists of cited by and citing cases may be incomplete.
Updated: 31 May 2022; Ref: scu.147380