PPDs and 'variant PPDs' receive judicial scrutiny

Today the Court of Appeal (Lords Justices Ward, Jacob and Warren) dismissed both Gore's appeal and Geox's cross-appeal in W L Gore & Associates GMBH v Geox SPA [2009] EWCA Civ 794, a keenly fought contest relating to two Geox patents and two proposed Gore shoes, one "cemented", the other"injected". Mr Justice Floyd inter alia had refused Gore's application for a declaration of non-infringement in respect of the cemented shoe, while granting a corresponding declaration in respect of the injected shoe.

This was a "facts only" appeal. Speaking on behalf of the Court, Jacob LJ said:

"The case involves no contested point of law – in oral argument - neither side took us to a single authority or statutory provision. The case turns entirely on the true construction of the main claims of the respective patents and on the descriptions in the PPD".

The PPD (product and process description) -- as I understand it -- is required of an alleged infringer (or applicant for a declaration of non-infringement) in place of a formal disclosure and/or where it is not possible to deduce the process by examining the product itself. The party supplying a PPD should testify to the accuracy of the statement and, if required by the other party, offer the person responsible for it for cross-examination. Where any ambiguity or deficiency is found in an PPD, it should be resolved, or create a presumption, in favour of the other party.

The PPD in this instance was unusual. As Jacob LJ explained, at paras 6 to 8:

"6. ... Instead of simply describing particular proposed products and processes in detail (which it did) it began by indicating that more general variants were also contemplated. Gore had a good commercial reason for this: they propose to license their technology and it was possible that the licensees would make variants. The description describing the possible variants was not particularly clear and it was upon this that Mr Meade [for Geox, the patentee] seized. It would not have been possible for him to do so if the passage concerned had been written with greater clarity, by spelling out each variant with precision.

7. In future it may be better to spell out in detail first a particular and specific product or process (possibly also by reference to a sample if one exists) and then to itemise separately and clearly each possible variant in respect of which the party concerned wants a declaration. If an individual variant has within it a range or range of possibilities their limits should be clearly spelt out. Use of a word such as "generally" is likely to add fuzziness and may result in a refusal of a declaration. Quite apart from anything else, if this manner of drafting is followed and it later turns out that a particular variant may infringe it may still be possible to grant a declaration of non-infringement in respect of the specific embodiment described and perhaps in respect of some other specified variations – in effect blue-pencilling the variant which might infringe.

8. I say this because it is clearly the law that, as the Judge put it at [93]: "The court is being asked to declare that everything falling within the description is not an infringement of the patent". So if a description is framed with a series of clear alternatives, declarations can be sought or made in respect of each clear alternative".

It may be asked whether, in respect of proposed methods of manufacture, variant PPDs should be encouraged. What is there to prevent an applicant for a declaration of non-infringement coming forward with a plethora of closely related alternatives -- particularly in respect of a relatively complex patent -- in order to determine which of a number of possible options are available so that costing for the purposes of manufacture or outsourcing can be rendered as risk-free as the Patents Court or Court of Appeal can render it?