Common General Knowledge and Inconvenient Details - Accord v Medac and Unwired Planet

Two recent rulings of Mr Justice Birss of the Patents Court, England and Wales contain interesting statements on obviousness attacks based on common general knowledge alone, adding some new aspects to the findings of the words of Floyd J (as he then was) in ratiopharm v Napp [2008] EWHC 3070 (Pat) at paragraphs 155-159.  The problem is that what is presented as common general knowledge is necessarily a synthetic picture based on overlaps in various pieces of evidence (and the recollection of experts) where inconvenient details are inevitably (or deliberately?) left out. In Accord v. Medac, Birss J. presents the following caveat:

Obviousness over common general knowledge alone

119. I am not satisfied that the invention is obvious based on the common general knowledge alone attack relied on by Accord. That is because the relevant common general knowledge must be that in the UK (see Arnold J in Generics (UK) v Warner Lambert [2015] EWHC 2548 (Pat) at paragraphs 123-124) and in the UK the skilled clinician was unaware as a matter of common general knowledge what concentrations were being administered subcutaneously to patients and was unaware, without prompting, of any particular issue of pain arising from the subcutaneous administration. There is therefore nothing to provide an impetus to the skilled team to think about the issue at all.

120. Before leaving the argument based on common general knowledge alone, I will mention the words of Floyd J (as he then was) in ratiopharm v Napp [2008] EWHC 3070 (Pat) at paragraphs 155-159 and in particular the passage at paragraph 158 which warns that such attacks need to be scrutinised with care since they can be favoured by parties because the starting point is not obviously encumbered by inconvenient details of the kind found in documentary disclosures. I respectfully agree with Floyd J. Since it seems to me that this case provides a good example of the problems identified in ratiopharm I will add a few words of my own.

121. Normally the person attacking validity will rely on a particular concrete document or well defined prior use as a starting point. The fact that such a concrete item of prior art may be part of the common general knowledge is not the point. That is different from an attack based on common general knowledge alone.

122. Many inventions involve a combination of known features. However a combination of features, all of which individually were common general knowledge, can give rise to a valid patent claim if that combination is new and non-obvious. Patent trials are inevitably ex post facto and a key problem is to identify and avoid hindsight. Combinations of features can pose a particularly acute hindsight problem. The thing about concrete items of prior art, whether they are prior published documents or prior used products or processes, is that whatever combination of features that concrete prior art consists of, is not one which was created with hindsight knowledge of the invention.

123. The problem with arguments over common general knowledge alone is that the combination of features relied on is always and necessarily one created with hindsight knowledge of the invention, and worse, is one which the person attacking validity has not been able to find as a pre-existing combination in the concrete prior art. If they had they would have relied on that concrete prior art. Either the combination has not been made in the concrete prior art at all or it only appears with additional inconvenient details. If an invention is not obvious over the concrete prior art which is relied on, the court is entitled to be sceptical that an argument that it is nevertheless obvious over common general knowledge alone is correct.

124. The problem is illustrated in this case. Sometimes an invention belongs to a field which is not well documented but in this case Accord did not lack possible starting points. It has pleaded two documents and could easily have pleaded others, such as the existing SmPCs for subcutaneous methotrexate. However the documents contain what might have been thought of as “inconvenient” details. Russo does not mention subcutaneous administration by name and is aimed at JCA rather than RA. Russo is also a small study and was published six years before the priority date. Jansen does mention subcutaneous and is for RA but it does not mention pain and contains the two statements referred to above which medac relies on. That the “inconvenient” details in Russo have not led to a finding of non-obviousness is not the point. To invent as a starting point in the prior art an amalgam of the best bits of the two cited documents while leaving out the inconvenient aspects, which is in effect what the argument was, created a combination which did not hitherto exist.

These wise words are re-emphasised in the most recent decision in Unwired Planet v. Huawei saga as follows:

A final general point on obviousness
233. I have addressed the obviousness arguments on their merits. However in my judgment the argument based on common general knowledge alone contained a good number of the familiar flaws in arguments of this kind which were discussed by Floyd J in Ratiopharm v Napp [2008] EWHC 3070 (Pat) at paragraph 155-159 and by me in Accord v Medac [2016] EWHC 24 at paragraphs 119-124. The argument in this case had not been properly pleaded. That is not the defendants' fault because the parties agreed to treat Mr Townend's first report as a statement of the case. However the case then shifted very close to trial, which demonstrated why it should have been pleaded properly in the first place. Furthermore the argument presented a combination of common general knowledge features which had been created with hindsight knowledge of the patent. It was presented in a way which lacked inconvenient details which were found when the same ideas appeared in the committee documents and it presented points of common general knowledge at a level of generality which itself was crafted with hindsight.   

Instructing the Expert - American Science & Engineering Inc v Rapiscan

One of the key differences between the UK patent litigation system and the continental system is the role of expert evidence, in particular when it comes to inventive step. German courts consider obviousness to be a question of law, the role of the experts being only to shed light on the knowledge and mindset of the the person skilled in the art at the priority date. Finding a compromise between both of these positions will surely be a crucial task to tackle in the first decisions of the UPC.

In the decision American Science & Engineering Inc v Rapiscan Systems Ltd [2016] EWHC 756 (Pat) (11 April 2016)  , justice Arnold shares the following general comments on how to instruct the expert:

General comments on the expert evidence
 
109. Each party contends that the other party instructed its expert to ask himself the wrong question. Both sides' solicitors proceeded in a carefully structured manner by first asking their expert to consider the person skilled in the art and the common general knowledge, then to consider the prior art relied upon by Rapiscan and only then to consider the Patent. The difference between them was that AS&E's solicitors asked Dr Bjorkholm to consider obvious developments of the prior art before showing him the Patent, whereas Rapiscan's solicitors only asked Dr Lanza to consider the question of obviousness after they had shown him the Patent.
 
110. In my view there is force in the criticisms which each side levels at the other's approach. The approach adopted by AS&E's solicitors had the advantage that it enabled Dr Bjorkholm to consider obvious developments of the prior art free from knowledge of the Patent; but it meant that he never addressed in his reports the question of whether the differences between Swift and the claimed invention constituted steps which would have been obvious to the person skilled in the art. The mere fact that a step did not occur to Dr Bjorkholm when reviewing the prior art was not sufficient to exclude the possibility that he might agree that it was obvious if asked. Unlike the person skilled in art, real people sometimes miss the obvious.
 
111. The approach adopted by Rapiscan's solicitors avoided that difficulty. The problem is that, whereas the correct question is whether, viewed without any knowledge of the claimed invention, the differences constituted steps which would be obvious, Dr Lanza expressed his understanding of the question he had been asked to consider without referring to the need to exclude knowledge of the claimed invention. Moreover, this does not appear to have been an artefact of the drafting of the report. On the contrary, Dr Lanza confirmed in cross-examination that his approach had been to consider obviousness as if the skilled person had been shown the claims and asked if they were obvious. Thus Dr Lanza does not appear to have understood the importance of trying to avoid hindsight.

Report on the 15th UPC Preparatory Commitee Meeting

The UPC Court of Appeal Building in Luxembourg

The Report on the 15th Meeting of the UPC Preparatory Committee Meeting is available here.

Good news is that Bulgaria is about to ratify and that the recruitment package was agreed (but not yet published) and that adverts for judicial appointments will be advertised in early May.

A draft code of conduct for representatives is being elaborated by the epi, EPLAW and EPLIT and has been discussed (but not yet published). The same applies for the Rules on Arbitration and the Rules of Operation of the Patent Mediation and Arbitration Centre of the Unified Patent Court.

The next meeting will take place on May 26 in Germany and a signing ceremony for the "protocol of provisional application" will take place in June.

Inescapeable Priority Trap - T 1983/14

In the case T 1983/14, the patentee hat gotten into an inescapable trap situation by adding a limitation to the claim which had been disclosed in the EP application as originally filed but not in its Irish priority application. To make it even worse, the patentee had publicly used the invention during the priority period.

The patent related to an apparatus capable of topping up a prepaid credit on a mobile phone as well as purchasing other products (judging from the priority date 2004 I presume that the other products included ringtones, which was quite fancy at that time). The feature in question was that the "mobile telephone credit product" and other products on the apparatus were invoiced as one transaction".

The deletion of this feature would have contravened Art. 123(3) EPC while keeping the feature renders the priority claim invalid such that the patentee's prior use is prior art.

The Board points out that there is an analogy to the inescapable trap in G 1/93 as follows:

Article 123(3) EPC prevents the removal, after grant, of a problematic, limiting feature. The problem described in G 1/93 was a violation of Article 123(2) EPC. In the present case, it is lack of novelty due to loss of priority. See point 5.3 of the reasons.

 This blogger's attention was drawn to the "unambiguous disclosure" test applied by the board:3.7

The Board considers the most promising basis for "one transaction" to be the statement on page 4, lines 12 to 13 of the priority document:  

"[a]lternatively, the top-up software control module has means for printing the top-up code onto a customers receipt and adding the value of the top-up to the total receipt".  

Here, "adding [...] to the total receipt" could, indeed, refer to a running total, which is invoiced in one sum at the end. In other words, the statement on page 4 can be interpreted to cover the "one transaction" feature. That is, however, not enough. A basis must be direct and unambiguous. Thus, the question remains whether this statement is open to any other reasonable meaning.  

3.8 In the Board's view, there is an ambiguity to be resolved. "[T]otal receipt" can be read as referring to the complete physical document provided to the customer, comprising the top-up code and the receipt of payment for the top-up. In other words, both the top-up code and the price paid for the top up are to be printed on the receipt. That is, indeed, an interpretation that accords with the statements on page 1 of the priority document (see point 3.5, above). Thus, in the Board's opinion, there is no implication that the receipt is for other products than mobile top-up. Consequently, there is no direct and unambiguous implication that the purchase of other products is included in the same transaction.

In other words, a statement is not unambiguous if it is not open to any other reasonable meaning. I do not remember to have seen this test in the EPC case law and wonder if it could be helpful? As an opponent, it would be possible to disprove unambiguous disclosure by presenting a reasonable alternative interpretation. However, the discussion would then probably shift to whether or not the interpretation is still reasonable or not, which is not much different by the